U.S. Registration Process
Steps to Register Your Brand
You must successfully complete all of these steps to register your brand as a trademark.
- Application. This forms the basis of your rights. It should reflect both what you learned during the search and consider how the USPTO will review your request for registration.
- Government Review.The USPTO hires attorney examiners who thoroughly review 100% of the applications filed, and issue initial refusals to approximately 85%. You should expect to receive a refusal. We can help you identify what type of refusal you will likely receive and have a plan to help you get past this step.
- 3rd Party Review. Once an application passes government review, it is “published” for third parties to raise objections. While few applications are objected to by a third party, you can seldom predict how a third party will react to your application. We can help you navigate any unforeseen objections.
- Demonstrate Use. In almost every case, you need to prove that you are using your brand. The rules surrounding this are often illogical.
Registration
Registering your brand with the United States Patent and Trademark Office is one of the most common ways to authenticate and enhance your rights in your brand. Some of the rights granted to federally registered trademarks include:
- Trademark is listed in a searchable database of registered and pending trademarks. This provides public notice to anyone searching for similar trademarks.
- Legal presumption that you own the trademark and have the right to use it.
- Basis for filing for trademark protection in foreign countries.
- Right to bring a lawsuit concerning the trademark in federal court.
- Ability to use the federal trademark registration symbol, ®, with your trademark to show that it is registered with the USPTO.
- The ability to achieve “incontestable status” after five years of registration.
There are four basic steps to get your trademark registered with the USPTO. You must successfully complete all of these steps to achieve registration.
Application
The first step to getting your brand registered is to file an application with the USPTO. We will help you prepare this application to reflect what we’ve learned while conducting searches for your brand, utilizing strategies we’ve gained in our decades of experience. While many of the items requested in the application seem straight-forward (e.g., name of applicant), it is important to note that all items have many legal issues to be considered. Also, the application represents the maximum right you can gain from the government as any future modifications can only narrow the scope of requested legal protection. There are many services that purport to help you with this, but they often leave you stranded as the application moves through the other three steps required for registration.
Government Review
The government then reviews your application to ensure it is eligible for registration. This review usually takes months to complete. At the time of this writing the USPTO reviews applications about 10 months after they are filed. We have seen this number range from 3 months to 14 months during the past two decades. The government reviews many formal issues such as likelihood of confusion, descriptiveness and failure to function, as well as numerous other issues. A vast majority of applications receive initial refusals (aka “Office Actions”). You must successfully respond to these issues to move forward towards registration. The exact nature and scope of the Office Action should not be a surprise if the search and application were professionally prepared. Many lawyers who dabble in trademark law refer the more difficult formal refusals to specialists like our firm.
3rd Party Review
Once you’ve completed the government review, the application is then “published” for third party opposition. Third parties have 30 days from the date of publication to either file a Notice of Opposition or request an extension of time to formally oppose the application. Very few applications are opposed, but this is often a challenging stage for the few that are. Many lawyers who dabble in trademark law refer opposition matters to specialists like our firm.
Demonstrate Use
Finally, you must file an Amendment to Allege Use to show that your brand is currently being “used in commerce” (i.e., you are selling services or products in the United States under that brand). This step can be accomplished at almost any point along the process, including with the original application. The rules of acceptable evidence of use are often counterintuitive, and the rules about dates of first use can be tricky. However, if an application completes the publication period without having filed an AAU, the USPTO provides a limited amount of time for you to demonstrate this use. Specifically, you will have six months from the time the application is “Allowed” to either show use or request a six-month extension. You can request a maximum of 5 six-month extensions.
Our professionals have helped thousands of brands become registered with the USPTO. Let us help you next!