The trademark registration process involves several stages, each requiring careful planning, strategic decision-making, and compliance with legal requirements. This article describes the main stages and their key peculiarities, providing insights into the essential steps for trademark registration.
Stage 1: Trademark Search
A trademark search is not required but recommended. It helps determine similar or identical trademarks registered or filed, common trademark law rights, and even the titles of business entities. If similar trademarks are found, a trademark attorney can provide recommendations as to trademark registration and trademark use as well. For instance, the attorney can recommend narrowing the scope of goods and services or amending the trademark.
You might also be interested: Why a Trademark Search Matters: Avoiding Costly Conflicts
Stage 2: Preparing the Trademark Application
At this stage, key factors must be determined, including:
- Goods and Services: All goods and services are categorized into 45 classes under the Nice Classification. Selecting the correct class and precisely defining the goods or services for your trademark is crucial. In some cases, classification can be tricky. For example, software may fall under Class 9 (downloadable software) or Class 42 (software as a service), depending on its use. Choosing the wrong class or inaccurately specifying goods/services can result in additional costs or even refusal of the application;
- Basis for Filing: If the trademark is not yet in use, the application will be based on an intent-to-use basis, which involves additional costs by filing a statement of use and paying a fee for such statement later. If the trademark is used, the applicant will avoid paying an additional fee for a statement of use but is required to provide specimens of goods or services initially with the trademark application.
Stage 3: Filing the Trademark Application
The trademark application is submitted to the USPTO along with the required government fees. The filing fee depends on the number of classes included in the application. As of January 2025, the USPTO has introduced surcharges for goods and services not listed in the ID Manual (simplified and classified list of goods) and, in some cases, for extensive lists of goods and services. Additional fees may apply for omitted information. That’s why a correctly submitted application can avoid delay in its consideration and extra payment.
Stage 4: Examination by the USPTO
A USPTO examiner reviews the application to determine whether the trademark meets registration requirements, for instance:
- evaluating potential conflicts with existing trademarks;
- assessing whether the mark is descriptive;
- checking for other grounds for refusal.
If the application meets all formal requirements and there are no grounds for refusal, it proceeds to the next stage.
Stage 5: Publication for Opposition
If the examiner approves the application, it is published in the Official Gazette. Third parties then have 30 days to file an opposition, with the possibility of requesting an extension. Oppositions are often filed by businesses that believe the trademark applied for is too similar to their own.
Stage 6: Notice of Allowance (For Intent-to-Use Applications)
If no opposition is filed, the examiner will issue a Notice of Allowance. Such notice does not mean the trademark is registered yet. The applicant must submit proof of use to complete the registration process. As discussed above, the fee is required at this stage.
Stage 7: Trademark Registration
If no oppositions are filed and the trademark is based on actual use, the USPTO issues a registration certificate. The owner can then use the Âź symbol, signifying that the trademark is officially registered. If the application was initially filed as an intent-to-use, registration is granted after proof of use is submitted.
Post-Registration Requirements
Once the trademark is registered, the owner must:
- Confirm Use: The first use confirmation must be filed between the 5th and 6th year after registration. The trademark will be canceled if the trademark holder does not confirm the use within the required timeframe or during the grace period. Ortynska Law assists clients by providing timely reminders about these deadlines and further trademark maintenance
- Renew the Trademark: Trademarks must be renewed every 10 years. Failure to do so results in cancellation of the registration.
Timing
When you file a trademark application, the first review usually happens in about 6.1 months, and the full processâwhether it leads to registration or closureâtypically takes around 12.7 months. However, timelines can vary since many factors affect how long it takes to examine a trademark filing.
Trademark attorney Mariya Ortynska assists clients in trademark searches, filing trademark applications for registration, responding to office actions, and post-registration maintenance.
Clients receive tailored advice on their trademarks and guidance on their course of action at every stage of the process.
If you have any questions about trademark registration or enforcement, you can contact Ortynska Law at [email protected] or by phone at +1 (914) 703-5632.