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  • Writer's pictureTodd

The Trademark Filing Process

You’re going to want to do a really good trademark research and clearance search. That’s where an attorney like me comes in. Doing a quick search on the USPTO’s Trademark Electronic Search System (or TESS) is a good first step, but it’s not enough. The Examiners are going to be looking at misspellings, similar phonetic sounds, and for different letter combinations, so a good clearance search will include those searches as well. If your proposed trademark is a logo, there is a whole database of design search codes to assist with the clearance search.

There are other factors to consider as well, such as descriptiveness, likelihood of confusion, and whether the mark is just a surname, to name a few. Good legal trademark advice is not just about whether you can get a registration, but also includes discussion about your branding goals and whether a trademark registration will accomplish what you want.

The next step would be to file a trademark application using the USPTO’s Trademark Electronic Application System (or TEAS). There are several more factors to talk about, such as have you already used the mark in interstate commerce, or is this an intent to use application? What products or services have you sold, or do you intend to sell, using the proposed trademark? If you already use your mark in commerce, you will need to provide what’s called a specimen and some other information. Typically, your attorney will email you a form to electronically sign, and then file your application!

Now what? The waiting begins. Currently, we are not seeing an Examiner look at an application until about 10 months after filing. Once the Examiner takes a look for themselves and does their own search as described above, typically one of these things happens. One, the Examiner will call your attorney to settle easier issues such as disclaimers or legal entities; or, the Examiner will issue what’s called an Office Action. If the Examiner issues a Non-Final Office Action, you have three months to respond (or you can request an extension for a fee).

Let’s assume the Examiner is satisfied with your filing or you have overcome any Office Action with your response. Then, you will receive a Notice of Publication, and your trademark will be published in the Official Gazette. Other parties will have 30 days to file an Opposition to your trademark, and in certain circumstances, they can receive an extension of time. If nobody files an Opposition, congratulations, you should expect to receive your digital registration certificate soon!

As you can see, obtaining a trademark registration is not an overnight process. You can expect to invest a year or more in the process to get it done correctly. There is never a guarantee that your trademark will obtain a registration, which is why the initial legwork is so important. There are a lot of pitfalls so good, personalized representation is important.

Please note that the information contained in this article is intended for general informational purposes only and not as specific legal advice. The facts of your situation may differ from this general information. It is not intended to and does not in any way establish an attorney-client relationship.

If you wish to schedule a consultation, let’s work together on your trademark needs


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