What's a trademark registration?
This is what it’s all about. Getting that certificate of registration with the gold seal from the United States Patent and Trademark Office (PTO). It’s a great feeling every time we get one in the mail, because clearing a trademark and getting it registered is rarely simple and takes time and skill. If everything goes well, you might expect to be holding a certificate of registration in your hands within eight or nine months of filing a trademark application. If there are issues, it can take longer.
The process of applying for a trademark registration begins after the requisite trademark clearance has been performed. Applying for a trademark registration without having a trademark attorney perform a clearance search subjects the applicant to unnecessary risk. The costs of clearing a trademark are nominal compared to the costs of defending a lawsuit for trademark infringement, re-branding, settling, and/or paying damages.
In preparing a trademark application, a trademark attorney should craft a description of goods and services that matches the applicant’s actual or intended use of the trademark. Applications that include overly broad definitions of goods or services may stand a greater chance of coming into conflict with existing registrations, and may later serve as the basis for a petition to cancel a trademark registration on the basis of fraud. An applicant should not claim rights to goods or services not actually offered or intended to be offered in connection with the trademark. The PTO recently has canceled a number of trademark registrations which claimed use in connection with goods or services not actually offered by the trademark holder.
A trademark attorney should also be aware of the possible classes of goods or services in which the application may be filed, and should advise the client on which classes to apply for. Classifications change over time, however. An application that was granted by the PTO in a single class this year might be split into four classes next year. We’ve seen it happen! Another important thing to remember is that as much as one refers to the PTO, there is no single, monolithic entity, which issues uniform rulings on every trademark application. There are several hundred Examining Attorneys working for the PTO. Their decisions can be subjective and not always consistent. Some rulings can leave you scratching your head. There are no absolutes when it comes to the PTO, but an experienced trademark attorney can help you to plot a strategy to help minimize the odds of an unexpected ruling, while maximizing the chances of shepherding a trademark application to registration.
A trademark application can be filed based on use of the trademark in commerce as a trademark – that is, as an identifier of the source of goods or services. When we see the word Nike or the Nike swoosh, we know exactly what brand that is and what products they make. It’s not a trademark if you don’t use it in commerce. An application may also be filed on an intent to use basis. This allows applicants to apply for a trademark even before using it. In the case of intent to use applications, use in commerce must be made within six months after the PTO grants what is called a notice of allowance. Extensions may also be purchased which extend the time to use the trademark to three years. It is only after actual use in commerce is made that an intent-to-use application can mature into a trademark registration.
About three months after a trademark application is filed, the application is reviewed by an Examining Attorney who makes a preliminary determination on the application. The Examining Attorney may either approve the trademark for publication, which is less common, or issue an office action in which the Examining Attorney objects to one or more facets of the application. Objections range from the easily curable to major substantive hurdles. An applicant typically has six months to respond to an office action, or the application will lapse. The majority of office action objections can be overcome, especially if diligence was done before filing, and the trademark application was properly drafted.
After an application is approved by an examining attorney, it receives a publication date. This comes in the form of a notice of publication, alerting the applicant to the fact that the trademark will be listed in the PTO’s Official Gazette for a period of thirty days. During that thirty-day period, anyone who believes that he, she or it will be harmed by the registration of the mark can file an opposition. If the application clears the publication period without anyone opposing it, the PTO will typically issue a certificate of registration within 1-2 months. Our sections on Why Register, the Application Process, USPTO Review, and Types of Marks provide further information of registering trademarks.
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“ The trademark attorneys at Lewis & Lin are responsive, easy to work with, and fair! ”
— Harvey Moscot (CEO), Moscot NYC