Have you ever noticed a “®” symbol next to a company’s name? These symbols indicate that a company has registered a trademark or service mark with the United States Patent and Trademark Office (USPTO), the U.S. Department of Commerce agency that provides extensive protection through the U.S. government. A Trademark or Service Mark identifies a good or service through a design, phrase, sound, color, or symbol. Global corporations such as McDonald’s have trademarks covering anything from their iconic golden arches’ logo to their renowned “Happy Meal.”
While registering your trademark with USPTO is not required, because once an individual starts using a mark associated with their good or service in commerce, they own it and possess limited rights over its usage within their geographical area. California residents can also seek protection within the state by filing with the California Secretary of State. However, to maintain broader protection throughout the country, registration with the USPTO provides extensive protection and the right to use the “®” symbol. It is important to note that the USPTO does not enforce trademark usage. It is the responsibility of the mark holder to pursue appropriate action if a party is infringing on their rights. USPTO does bar similar trademarks in a related good or service from registering with them.
The first step in the application process is to determine whether your mark meets the criteria of a strong trademark. All proposed Marks will be measured on their uniqueness in their respective area and their protectability regarding third-party use. The USPTO provides numerous videos that detail the specific requirements to secure a mark. Applicants must determine the mark format and identify the good or service assigned to the mark. They also should review other trademarks on the Trademark Electronic Search System to ensure that their mark or a variation does not create a likelihood of confusion.
After collecting this information, you can begin filling out the application. The USPTO offers an online application through the Trademark Electronic Application System. The standard fee is $250 per application, which includes one mark. After submission, it is up to the applicant to monitor their application status. A USPTO attorney will review the application and determine if it satisfies all requirements. If the trademark attorney decides that a mark should not be registered or requires additional information, they will send an office action letter that applicants must respond to within six months from the date of the action letter. After a complete review, applicants will receive an approval or denial of their application with a notice of allowance.
If denied, the applicant has various procedures to seek redress. However, once a approved, the mark is published in the online Trademark Official Gazette. Notably, the mark is not yet registered but is subject to opposition for a 30-day period, which any member of the public can oppose by filing a Notice of Opposition starting a legal proceeding with the Trademark Trial and Appeal Board (TTAB) about your trademark. If no one opposes your trademark during the publication period, your application proceeds to the next stage of the registration process. It still hasn’t registered. It can take three to four months from when your trademark publishes to when you receive official notification that your trademark has either registered or moved to the next stage.
If approved, applicants have eight weeks to either submit a statement of use or an extension request. From there, USPTO will ensure that the statement meets minimum filing requirements before officially permitting a registration. Trademark registration also requires maintenance, so owners should monitor registration status annually to ensure that any time-sensitive documents are filed according to the USPTO renewal timeline. The entirety of the registration process typically takes anywhere between 12-18 months.
The Legal Resource Center (LRC) will be hosting a An Afternoon with An Afternoon with a USPTO representative on Wednesday, October 6, 2021, who will be discussing trademarks and other Intellectual Property. Registration for this event is required. For additional information about this event, reach out to the LRC or contact the USPTO about your specific needs.