Trademarking your business name, logo, or slogan in the United States is accomplished by obtaining a federal trademark registration from the Unites States Patent and Trademark Office. A USPTO registration gives the trademark owner exclusive national rights to use a trademark for goods or services within a particular trademark class. State trademark registration is also available, however most people seek federal trademark registration with the USPTO.
Overview of the trademark registration process
1. Conduct a trademark search to determine if the trademark you seek to register is available.
2. Prepare and file a federal trademark application with the USPTO.
3. The TM application will be assigned to an examining attorney at the USPTO (about 4 months after filing).
4. The examining attorney will review the application and may either approve it or issue office actions.
5. If an office action refusal is issued, it must be responded to within 6 months to preserve the application.
6. If the application is approved, the trademark is published for opposition in the Official Gazette.
7. During the 30 day publication period, the general public may file a formal opposition to a registration.
8. The proposed trademark will be granted a registration if there is no opposition.
How long does it take to register a trademark?
The USPTO takes about 1 year to process a trademark application, however, the process can last even longer depending on if any legal issues arise. Often times the USPTO will issue what’s called an office action, which is essentially a rejection. Office actions can be substantive or non-substantive. Substantive office actions are generally based on defects in the trademark itself and can be difficult to overcome. A common example of this is a “2(d)” refusal, also known as the “likelihood of confusion” refusal. In this situation, the examining attorney may decide that a proposed trademark is too similar to a previously registered trademark. Overcoming this type refusal requires a persuasive response that cites legal precedent.
Non-substantive office actions are issued for technical defects in the application, which are generally easier to overcome. The applicant has 6 months to respond to either type of office action, or the application will be considered “abandoned” and the applicant’s filing fee will be forfeited.
How much does it cost to register a trademark?
The USPTO charges a $225 to $325 filing fee per class of goods or services for each trademark. Legal fees for trademark applications vary depending on the attorney. Some attorneys include fees for the trademark search, fees for responding to non-substantive office actions, and other representation throughout the registration process. Others attorneys charge simply for the preparation and filing of the application.
Should I hire an attorney?
Hiring an attorney is recommended. Prosecuting a trademark application starts a legal proceeding with the USPTO and having an attorney represent you will increase the likelihood that the application matures into a registration. An attorney can also expedite the registration process by correctly filing the trademark application and monitoring the application status during examination. It’s also helpful to have an attorney who’s familiar with your application in the event that an office action is received.
Thomas Law Firm PLLC | 175 Varick St | New York, NY 10014
