About Trademark Registration

Trademark Registration Fees
Apply for Trademark Registration.

Once you have determined that a proposed trademark or service mark appears clear and that a successful registration is likely, the next step is to prepare and submit an application for trademark registration.

The registration process for a U.S. federal trademark has a level of complexity between that for a copyright and a patent. The copyright registration process generally is limited to making sure the application is filled out correctly, and the proper fees and copies are attached. The whole process takes a couple of months. A patent registration involves a high degree of technical review, the application itself requires specialized technical skill to prepare, and the process may take several years to complete.

A trademark application, on the other hand, is reviewed by a staff attorney at the office of the Assistant Commissioner for Trademarks, a division of the U.S. Patent and Trademark Office, primarily to determine whether the mark is confusingly similar to another registered or pending mark, so as to be likely to deceive or mislead the public in identifying the origin of any goods or services associated with the mark. Plus, any accompanying drawings and specimens are carefully scrutinized by the examiner.

Usually 6-8 months after receiving the application, an examining attorney examines the application to determine if the mark may be registered. The examiner is permitted to contact the applicant by phone to clear up any minor matters. If the mark is determined to be unregisterable, the examiner will issue a letter of explanation stating the reasons for rejection and a listing of any corrections required for the application. The applicant then has six months from the date of the mailing to respond to the examiner's objections or the application will be abandoned.

If the applicant's response to the examiner are insufficient to overcome the objections, the applicant may then appeal to the Trademark Trial and Appeal Board.  This begins a lengthy process akin to a trial but in the form of an administrative, adversarial hearing. While marks may be refused for a number reasons, the most frequently cited reason is that they are likely to cause confusion.

Provided that the mark is acceptable for registration, it will be published in the Official Gazette. A weekly publication, the Gazette lists all of the marks seeking registration.  The function of the Gazette is to permit third parties, as owners of other trademarks, the opportunity to review all of the marks that are applying for federal registration. This allows other trademark owners to notify the Trademark Office of their Opposition to any of the pending marks.

If another party files a Notice of Opposition to the subject mark, then an Opposition Proceeding will commence. An Opposition proceeding is an opportunity for someone to challenge the registration of the proposed mark based upon the premise that its registration will in some manner cause damage to a pre-existing mark.  Opposition proceedings are managed by the Trademark Trial and Appeals Board. If an opposition is successfully overcome the mark may be registered. If no Opposition is filed then the mark will register and a certificate of registration will issue in about 12 weeks after the date that the mark was first published.

The term of a trademark is 10 years. Trademarks must be renewed by the filing of a renewal application. Renewal applications may not be filed until at least 6 months prior to the expiration of the trademark registration. In order to preserve a trademark, a registrant must file with the Trademark Office an affidavit or declaration of continual use, between the fifth and sixth year following the date of initial registration.

In other words, the trademark registration process is very much an adversarial process, requiring skill and persistence. You don't just file an application and wait for the registration certificate to come in the mail. You have to defend, argue, and persuade in order to achieve a successful registration. Which is why you might want some help in filing a registration application and following up after an examiner has responded.

Trademark Registration Fees
Apply for Trademark Registration.