Obtaining a federal trademark registration is a time-consuming process that frequently requires the expertise of an intellectual property attorney to successfully navigate the numerous obstacles that can arise. This process begins with the selection of the trademark and, ideally, retaining a trademark attorney. The first step is to ensure that the chosen mark is more than likely available for registration. To do so, one should conduct a trademark availability search.
Anyone can conduct a search free of charge at the Patent and Trademark Office website. In many cases, however, only experienced trademark lawyers know how to properly search the Patent and Trademark Office database and, what is more important, how to interpret this search. In some cases it may appear that a trademark is not available when in fact it is. What is worse, it may appear a trademark is available, when it is not.
In addition to the Patent and Trademark Office website, many trademark lawyers may use proprietary databases maintained by private companies that provide for more sophisticated search tools. Although these are expensive, they may be worth it because they increase the chances of making the right decision on selecting a trademark and applying for its registration.
After performing an availability search and determining that the client's mark is likely available, the trademark application is prepared. The application should include all of the necessary information for the Patent and Trademark Office examiner to approve the application:
1. The exact trademark must be identified and any design element described.
2. The proper owner of the trademark needs to be identified.
3. It must be stated whether the trademark has been used in U.S. commerce or whether the application is to be filed based on an intent to use basis (which postpones the requirement of showing use).
4. If there has been use, the date of first use as well as an image of the trademark as used in commerce must be submitted.
5. The application must list with specificity what goods or services the trademark is or will be used.
6. If the applicant has recently filed an application in a foreign country or owns a registration in a foreign country for the identical mark, this information might form an alternative basis for filing the application.
7. Where appropriate other information such as claims of acquired distinctiveness, disclaimers, translations, and ownership of prior registrations for the same mark should be included.
8. The proper placing of the mark within one or more international classes according to the treaty of Nice should be determined.
A number of issues arise during this initial step. For example, what is "use in commerce" or what is the proper way to categorize the mark? It is helpful to understand these and other concepts and to have access to and know how to use the Trademark Manual of Examining Procedure, the Acceptable Identification of Goods and Services Manual, and the Design Search Code Manual.
After preparing and reviewing the trademark application, the applicant must sign a declaration in support of the facts and assertions made on it. One must be aware that misrepresentations of fact or intent in the application can form the basis for cancellation of any resulting registration due to fraud on the Patent and Trademark Office. The application is then submitted to the Patent and Trademark Office. Assuming there are no obstacles, it can take some 11 to 18 months from the date of submission for an application to mature into a registration.
It is important to note that, if the trademark registration is ultimately granted, the applicant's priority date is the filing date.
The next step in the process involves Patent and Trademark Office assistants entering the application data into their databases. It is during this step, some 4 to 8 weeks after submission, that one may receive a notice stating that a pseudo mark or design codes were assigned to the application to facilitate the future examination process. Reviewing this notice for errors is important.
At six to seven months after submission, an examiner at the Patent and Trademark Office will review the application for procedural errors and substantive issues. If any errors or issues are found, the examiner will issue an Office Action. The applicant has a six month window from the date the examiner issues the Office Action in which to respond or allow the application become abandoned.
Multiple Office Actions can be issued addressing new points each time. A second Office Action covering the same point as the prior Office Action is termed a Final Office Action. The applicant has one last chance to overcome the rejection either by regular response or appeal to the Trademark Trial and Appeal Board, or the application becomes abandoned.
After the examiner has deemed one's trademark application satisfactory, she or he approves the application for publication. The application is sent to the publication office for a final review. If the application is in order, a notice is issued that it will be published in the Patent and Trademark Office's Official Gazette. It takes approximately six weeks from the examiner's approval for one to receive a publication date. The publication of the trademark takes place about four weeks later. So publication should be expected some two and half to three months after examiner approval.
The publication process is intended to provide interested parties in the public with notice of the pending registration of one's trademark. Such parties have a 30-day window from the date of publication to file either an opposition to one's registration or request an extension of time to file an opposition before the Trademark Trial and Appeal Board. For further discussion of Trademark Trial and Appeal Board proceedings <link to Trademark Trial and Appeal Board page>. Assuming no opposition ensues, one can expect to receive one's certificate of registration some two to three months after the end of the opposition period.
It is at this point that one is permitted the use of the ® symbol. Prior to registration, one may use the TM symbol. Though one's common law trademark rights persist for as long as one does not abandon use of the trademark, post-registration requires a few regular "maintenance" filings between the fifth and sixth year and every tenth year thereafter.
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Cruz & Alcoba, PLLC
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Cruz & Alcoba, PLLC
3399 NW 72 Avenue, Suite 211
Miami, Florida, 33122
Representing clients throughout South Florida, including Miami, Miami-Dade County, Coral Gables, Aventura, Broward County, North Miami, South Miami, Miami Beach, Hialeah, Fort Lauderdale, and Pembroke Pines.
