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Article image How to file for a Trademark Registration at the USPTO

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Posted On Tue, Nov 15th 2011 Posted by : Staff


Legal Help for Registering a Trademark


The United States Patent and Trademark office offers the ability for anybody to file a request to receive trademark protection via an online application. The USPTO website is located at The process for applying for a trademark at the USPTO is fairly easy and in many instances can be done without the need to hire an attorney.

The first step in the process for filing for your trademark is to query the database of existing trademarks to make sure that there are no similar and confusing trademarks that are already registered at the USPTO on the Principle or Supplemental Register. The USPTO online website allows for a user to search for conflicting words that match the applicants search query. The applicant's mark will be reviewed by a trademark attorney after approximately 90 days to determine whether the words and design of the mark are similar to any existing trademarks that have already been approved by the USPTO. Senior marks that are already allowed to be registered on the Principle or Supplemental Register have priority over applicants that are desiring to receive trademark protection by the USPTO at a later date. A simple search performed by the applicant prior to submitting an application will allow the applicant to determine whether the trademark attorney will likely approve the mark. If there are no marks that are similar or confusing to the applicant's mark then the applicant may want to continue to submit an application to the USPTO.

There are several common instances whereby an Examining attorney at the USPTO may deny an applicant's registration from receiving trademark protection at the USPTO. First, as already indicated, an Examining attorney may deny a mark being trademark protection even despite an applicant's initial belief that there are no similar and confusing marks already registered at the USPTO. The Examining Attorney may find that a mark is similar and confusing for "goods and services" that overlap between an applicants mark and an existing mark. The Examining Attorney is supposed to compare the marks in its entirety and not dissect the marks. If the Examining Attorney finds that the marks taken as a whole would likely lead to confusion in the marketplace then the Examining Attorney will likely deny the mark. But don't lose faith yet, the USPTO will allow the applicant further opportunity at a future point to argue that the marks are not conflicting and may coexist in the marketplace.

Another instance whereby an Examining Attorney may deny an applicant's mark protection on the Principle or Supplemental register is if the mark is deemed as "merely descriptive". The USPTO will not allow trademark protection for generic or descriptive marks that include a characteristic or quality of the goods and services for which the applicant is applying. The USPTO is most likely to approve a trademark when the mark sought by the applicant is either fanciful or arbitrary. Arbitrary and fanciful marks are afforded the most proection because the mark is more likely to operate as a source identifier of the applicant's "goods or services". For example, the word XEROX for photocopiers, MICROSOFT for personal computers and the IZOD alligator for clothing are all fanciful and arbitrary marks as related to their particular goods and services and therefore operate as a unique source identifier. This is not to say that descriptive words such as APPLE cannot acquire trademark protection by not being associated with the "goods and services" for which APPLES are commonly associated. APPLE for personal computer is a very unique source identifier so long as not used merely to describe fruit. Furthermore, even arguably descriptive marks can sometimes acquire "secondary meaning" by coming to be associated in the minds of the consuming public with a specific registrant. As such, even seemingly weak descriptive marks can sometimes acquire trademark protection at the USPTO if the applicant can convince the USPTO that the words have come to be associated with the consuming public with the applicant. For example, HOTELS.COM may seem merely descriptive of the goods and services associated with hotels but still has achieved recognition in the minds of the consuming public as being identified as a brand and not merely descriptive of hotel services in general.

After an applicant does the initial conflict search and review of whether the mark is merely decriptive as outlined above it is time to decide whether the applicant desires to proceed with the application. If the applicant decides to move forward the application process at the USPTO online website is fairly straightforward. The applicant will need to complete the standard application which will take approximately 30 minutes to complete. The Applicant will need to upload a black and white copy of the logo onto the USPTO website unless the applicant desires to claim color as a feature of the mark. The applicant will need to inform the USPTO whether an attorney is filing the application. However, there is no requirement to be an attorney in order to file an application. The applicant will need to inform the USPTO the entity type, whether the entity is an Individual, corporation, LLC, Partnership, Limited Partnership, Joint Venture, Sole Proprietorship, Trust, Estate or Other. The applicant will need to supply the USPTO with a physical address and contact information of the applicant but not to be confused with the correspondent which may differ from the entity claiming ownership over the application and mark. The applicant will need to identify the specific "goods and services" the mark is to be associated with. The USPTO has a classification system based on 45 types of "goods and services". The USPTO website outlines these 45 categories so it up to the user to determine the classification they are seeking protection under. An applicant is allowed to select multiple "goods and services" categories so an appplicant can seek protection for the same mark under multiple categories but there is an additional $325 fee for selection for each category. An applicant will need to select whether the filing is a 1(a) filing or a 1(b) filing. The applicant would select a 1(a) filing if the mark is actually used in commerce at the present time, otherwise the applicant would need select a 1(b) filing that there is no use of the mak yet in commerce but is "intending to use" the mark in the future. The applicant will need to attach a copy of a specimen demonstrating that the mark is being used in commerce. The applicant wil need to provide a description of the specimen and the date of first use of the mark anywhere as well as first use of the mark in commerce. Finally, the applicant will need submit the correspondents contact information and make a declaration of the truthfulness of all the information submitted in the application as well as paying the $325 filing fee.

After the applicant submits the application to the USPTO there will be no response from the USPTO for approximately 90 days. After approximately 90 days an Examining Attorney will be assigned by the USPTO to review the application. Typically there may be merely minor technical defects that may easily be cured. The 2 most common reasons as to why an application is rejected were outlined at the beginning of this article. These issues are usually insurmountable if an Examining Attorney believes the mark is "similar and confusing" to an existing mark or "merely descriptive" of the "goods and services". Aside from these reasons for non-approval there are other arguments that an Examining Attorney may offer for not approving an application. This article is not intended to outline all the reasons as to why an Examining attorney may not approve a mark because each application is unique and the reasoning of an Examing Attorney is too numerous for this limited article. Needless to say, if an Examining attorney offers any reason as to why an application should not proceed to registration then the applicant will need to convince the Examining Attorney that he or she is mistaken in order for the application to proceed. Alternatively, the applicant could submit an appeal to the TTAB (Trademark Appellate Board) but this is a timely and costly process in itself.

Assuming the Examining Attorney approves the application then the next step in the application process is for the mark to proceed towards "Publication". The time period from approval by the Examing Attorney to "Publication" is approximately 60 days whereby the applicants mark is published in the USPTO official trademark gazette. Any trademark holders that have reason to oppose the appplicants mark from proceeding to the Principle or Supplemental register may oppose the mark from moving forward at which point the TTAB (Trademark Appellate Board) would decide the claims of the parties as to whether the mark of the Applicant would be confusing with the claimed mark of the opposing party. This process can take anywhere from 9 mos. to 16 mos. so it is very time consuming if another mark holder opposes an applicants trademark from proceeding onto the Principle or Supplemental registere. The more valuable the intellectual properties then the more likely that said intellectual property will be policed by trademark holders. There are various trademark monitoring services that will monitor the USPTO website and alert trademark holders of potentially "similar and confusing" marks that are proceeding towards registration.

The trademark application process is fairly straight forward process and if no other trademark holder opposes the applicants mark then the application will typically mature into registration in a 9 month time period. Unless there are special circumstances, many applications do not require for an attorney to be hired. Non-attorney persons are easily capable of filing a trademark application at the USPTO without attorney help.



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