How to Trademark

Register a Trademark-Step by Step

 Create a Valid Mark A Trademark is a way to identify your product or service or even a family of products or services and distinguish it from other products or services. Creating a Strong Trademark takes both creativity and rule following. One rule that trips up lots of people applying for marks is: Trademarks that directly describe an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods or services are NOT strong trademarks and are difficult to register and difficult to protect.

 Verify the ‘Right to Use’  the mark by verifying no prior owner has rights (registered and unregistered). Common law rights for unregistered marks are geographic in nature and typically belong to the first user of a non-conflicting inherently distinctive mark. A trademark applicant has a legal duty to select a mark which is totally dissimilar to trademarks already being used.

A likelihood of confusion refusal from the USPTO is one of the most common refusals and one of the most difficult refusals to overcome. Conflicting marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related. For specific instructions on searching see Trademark Searching for Likelihood of Confusion. Not Just Patents uses a Five Step Verification for determining if a mark is strong and making sure all the rights are available.

Intentionally choosing a trademark in order to cause confusion with a competitor may be seen as an “affirmative step” and may go toward finding that a likelihood of confusion exists using the DuPont Factors: Applicant's Intent Under the thirteenth du Pont factor, evidence of applicant's bad faith adoption of his mark is relevant to our likelihood of confusion analysis. L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1891 (TTAB 2008) (bad faith is strong evidence that confusion is likely, as such an inference is drawn from the imitator's expectation of confusion). See also, J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991); and L'Oreal S.A. and L'Oreal USA, Inc. v. Robert Victor Marcon, ___ USPQ2d ___, Opp. No. 91184456 (TTAB March 20, 2012) slip op. at 25 (applicant's "demonstrated pattern of filing applications to register various well-known marks convinces us that applicant's adoption of [opposer's] mark was in bad faith"). Quoting Edom Laboratories, Inc. v. Lichter, (TTAB 2012).

 Verify the ‘Right to Register’  the mark under the USPTO (or state) rules and guidelines. Verifying that you have the right to register before you apply may avoid or reduce refusals & office actions, and can avoid investing time and good will in a name or use of a name that cannot be federally registered on the Principal Register. One example of a potential trademark that will cause problems at the USPTO because of the right to register is a trademark that is merely descriptive because describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant services. See General Rules For Determining If A Trademark is Merely Descriptive.

 Use the Mark in Commerce  to gain common law rights and as a precursor to registration or file an ‘Intent to Use’ application with the USPTO. See some General Rules About Use in Commerce for Gaining Rights in Trademarks and Service Marks for more information.

 Specimen Selection & Review  Specimens are required to show the mark as it is seen by the purchasing public and provide evidence for the registration. USPTO trademark examiners look to see if the specimen shows the trademark being used in a merely descriptive way or other reasons for refusal. Marks must be displayed in a manner so the consumer recognizes it as a mark and links it to the goods or services,  or in other words-does the specimen show the trademark functioning as a trademark. See How Do I Know What Specimen to Submit With My Application? for more information.

 Identification of Goods and Services The identification of goods and services must be specific, definite, clear, accurate, and concise. Misidentification of goods and services is the most common issue in trademark rejections. Often the trademark examiners will help an applicant with a proper identification in an office action or refusal. The identification can only be clarified or narrowed after the application is submitted, no new material can be added and the scope cannot be broadened except with a new application.

 Apply for Trademark Registration ®. The basic steps are filling in:

    The Applicant’s information (the owner not the person filling in the form!)

    The Mark information

    The Goods and Services ID

    The Filing Basis

    The Attorney and/or Correspondent Information

    Submitting, Paying the Fee, and Signing the Form

About 30% of TEAS Plus applications proceed without refusal (70% are refused). Having a Not Just Patents trademark attorney do a trademark search and properly file a trademark application is a good idea. An applicant must comply with all substantive and procedural requirements of the Trademark Act and Trademark Rules of Practice when applying to the USPTO for a trademark even if the entity or  he/she is not represented by an attorney. See a sample of what a TEAS Plus trademark application form looks.

 Office Action(s) from USPTO  Not all applications are refused. About 70% of TEAS PLUS applications are refused and receive office actions. The rate is even higher for TEAS applications because of additional errors in the identification of goods and services. In the office action the trademark examiner gives the reasons for refusal, the law behind the refusals and very often gives some advice on how to overcome the refusal. ‘You may wish to consult an attorney’ is one of the pieces of advice that is often given to pro se (without an attorney) applicants.

 Applicant’s Response to Office Action   Applicants (or their representatives) must address each issue raised by the examining attorney and responses to office actions must be received within 6 months from the mailing date on the office action. If applicants (or their representatives) do not submit a timely response to an office action, their applications will be declared abandoned. Having a Not Just Patents trademark attorney do a trademark search and properly file a trademark application is a good idea.

The Trademark is Published for Opposition Marks that have been approved for the Principal Register are published in the Trademark Official Gazette in order to allow for a 30 days in which someone may file an opposition or file for an extension of time to file an opposition. An OPPOSITION is a proceeding in which one party is seeking to prevent registration of another party's trademark. Under the law, if a party believes that he will be damaged by the registration of a mark, he/she can file an opposition. (A CANCELLATION is a proceeding in which a party seeks to cancel an existing registration of a mark. Under the law, a person who believes he will be damaged by the registration may file a petition to cancel.)

FAQ: How long between when a trademark is published for opposition and when it registers? If the mark is not opposed and no one has filed for an extension of time to oppose and if it is a use in commerce (1a) application, the current time period from the date of publication for opposition until registration is about 11 weeks. If the application is an intent to use application (1b), the mark will receive its Notice of Allowance in about 11 weeks after its publication date if it is not opposed and if no one has filed for an extension of time to oppose.

 Certificate of  Registration (for actual use) or Notice of Allowance (NOA) (intended use). If there is no opposition, the trademark will register and the applicant will receive a Certificate of Registration. If the filing was for an Intent-to-Use, the applicant will receive a Notice of Allowance and has 6 months to file a Statement of Use (or Amendment) or an extension or the application will be declared abandoned. The USPTO does NOT currently require an issuance fee (like some other countries).

 Trademark Marking The ® symbol can only be used (for the U.S.) after a USPTO registration has been issued and only for the goods or services for which it was registered.

 Enforcement/Maintenance  The USPTO does not enforce rights to a trademark. It is up to the owner of a mark to monitor and protect their own rights through civil or criminal means. Trademarks may be protected from imported counterfeits. See Anti-Counterfeit Enforcement for more information. A trademark owner may also enforce trademark rights through opposition or cancellation proceedings. A trademark owner must maintain a trademark by continuing to use the trademark in commerce and by filing for Continued Use or Excusable Nonuse and Renewal at the appropriate times.

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