Steps to Obtaining a US Trademark Registration

A. Conduct Name Availability Search

Prior to filing a trademark application, we urge all of our clients to consider a full trademark availability search in addition to an electronic search. The latter search can be done from our desks, and is useful for making a preliminary determination as to whether someone already has obtained the mark you desire. If that turns out to be true based on the preliminary search, much time and money can be saved. If however, the preliminary, electronic search does not reveal any substantial problems, we recommend the full search; such a search is outsourced to companies that maintain multiple databases that can be searched. While no search can guarantee that all potential conflicting marks will be located, the full searches that are available certainly address a substantial portion of potentially conflicting marks. The cost of the full search is money well spent as it can reveal potential problems before a company invests money in marketing material using an infringing mark.

B. Review Attorney's Comments

After legal counsel has conducted a thorough name availability search Applicant needs to review the attorney's comments regarding the availability of the mark.

C. File Trademark Application

There are two ways in which a trademark application may be filed:

1. Intent to Use: This option is the most desirable in terms of risk management as it allows one to claim rights in the mark prior to use by locking in a filing date and thereby putting third parties on notice of one's intention to use the mark in commerce. The goods or services for which the mark is intended do not have to be developed or manufactured at the time of filing the application

2. Use Based : This option is available when use in commerce has already begun. The application must indicate the date of first use in commerce and include specimens showing the mark in use on the product or service. No follow-up Statements of Use are required.

D. Filing Receipt

The filing receipt acknowledges that the USPTO has received the application and that it will be reviewed within the next several months. Foreign filings should be done at this time if desired ( See Section III International Filings ).

E. Application is Assigned to Examiner

Once an application has been assigned to an examiner, a review of the application will occur. The examiner will look to see that the mark is not confusingly similar to another mark or merely descriptive of the goods or service, as well as for any corrections or clarifications that may need to be made to the application. If registration is refused, an Office Action will issue and Applicant will have six months in which to amend or defend the application. If the Examiner approves the application, the mark will then be entitled to publish.

F. Amendment to Allege Use

If an intent-to-use application was filed, and use of the mark has begun, an Amendment to Allege Use (AAU) may be filed any time prior to publication. An AAU must include the date of first use of the mark in commerce and acceptable specimens

G. Publication

The mark is published in the USPTO "Official Gazette" for a thirty-day period. During that time other trademark owners may file oppositions to your mark. If oppositions are filed, a reply must be filed in order to defend the application.

H. Notice of Allowance

If there are no objections from other trademark owners filed within the thirty-day publication period, a Notice of Allowance will issue (assuming an intent-to-use trademark application was filed and no Amendment to Allege Use was filed prior to publication). Once the Notice issues, Applicant must file a Statement of Use indicating the date of first use of the mark in commerce and submitting specimens of the mark.

I. Statement of Use

Until the Statement of Use (SOU) is filed and approved, the mark will not register (unless an AAU was already filed).

If use has still not begun when the Notice is issued, Applicant may file a series of five six-month Extensions of Time for a total of 36 months. If a Statement of Use is not filed before the fifth extension expires, the application will be considered abandoned, and the application procedure will have to be started over again.

J. Acceptable Specimens

Products : The USPTO will accept product labels, stickers, tags, containers, packaging or materials which accompany the product. A photograph of the mark on the product is also acceptable as long as the mark is obviously on the product and not simply a photo of the label. Invoices, stationary, marketing brochures are not acceptable specimens for products.
Services : Acceptable specimens for service marks are marketing brochures, promotional materials, web site, advertising, etc

K. Registration

Once the USPTO has approved the Statement of Use the mark will proceed to registration. The registration certificate generally issues within three to four months after approval. The entire registration process can take from twelve months to two years assuming everything goes smoothly and any objections can be overcome. A U.S registration is valid for ten years from the date of registration.

L. Declaration of Continued Use

During the fifth and sixth year after the date of registration, a Declaration alleging continued use of the mark must be filed with the USUSPTO along with current specimens

M. Renewal of Registration

A renewal must be filed with the USPTO prior to expiration of the ten year period. Registrations must continuously be renewed every ten years as long as the mark is still in use. Non-use of a mark for two consecutive years may be proof of an intent to abandon the mark and could allow a third party to claim exclusive rights to the mark.