LIFE OF A TRADEMARK

Obtaining a registered trademark can be a relatively straightforward process. However, it does take time, sometimes 4 years. See details of the life of a trademark application below.

STEP ONE: Choosing a Name – Select a name for your product or service. You can prepare a design element or logo to go with the name. The name and logo can be used together and/or separately.

STEP TWO: Clearance Search – This takes 5-7 days. It is unwise to file for a mark and use it unless one is reasonably sure that there are no prior users of the same mark or confusingly similar marks for the same or similar products. Conducting a search is your best bet against infringement. Failure to search before adopting a trademark may raise a question of bad faith and justify an award of attorney’s fees.
(NTC also provides searches for a design or logo. If you have an unique design that is valuable to your business, we recommend having a search conducted.)
Positive Search Opinion – If the opinion of our attorneys is that the trademark is registrable, we prepare a trademark application.
Negative Search Opinion – If the opinion of our attorneys is that the trademark will likely not be approved for registration, we will conduct an additional search for a different mark free of charge.

STEP THREE: Application – This involves declaring the ownership information, all trademark information (description of goods/services, date of first use). NTC prepares the application, sends it to you, the applicant for review and signature. Once you send it back to us, we file it with the United States Patent and Trademark Office (USPTO) and submit the required government filing fee, 325 per class.

STEP FOUR: Examination – Approximately 4-5 months after the trademark application is filed, the application is reviewed by a government attorney in the Trademark Office. He conducts a search of the Federal Trademark Registry for conflicting or similar marks. He also reviews all the details of the application thoroughly. If he has any comments or objections, they are issued to NTC in the form of an Office Action. Note, in 85% of all cases, an office action is issued. We report the office action to you, the applicant, and advise you of the appropriate response. If the matter is one of a technical nature, the response is a matter of information. If it is a substantive office action, the issue is one of law, and research and drafting of an argument is required. The attorneys of NTC are experienced in all types of office actions.

STEP FIVE: Approval – After review of the application, or after receipt of an office action response, the Trademark Office sends out a formal notice of approval, which is really an Approval for Publication.

STEP SIX: Publication – All trademark applications are published in the Government Trademark Gazette, where third parties have an opportunity to oppose any mark they deem problematic. Third parties have thirty (30) days to oppose an application through the Trademark Office. This does not happen often, but when it does, the matter goes to the Trademark Trial and Appeal Board (TTAB) and the applicant can either defend his application or not. The attorneys at NTC will advise you as to the best course of action.

STEP SEVEN: Allowance- If no opposition is filed, the application is formally “allowed” to register. A Statement of Use is now required.

STEP EIGHT: Statement of Use – If the mark is in use, the date of first use and a specimen of the mark as used in commerce is required within six (6) months of the issuance of the Notice of Allowance. If the mark is not yet in use in commerce, an extension of time is permitted. Both the Statement of Use and the Extension require a fee. The applicant is allowed up to six (6) extensions totaling up to three (3) years. That gives the applicant up to three (3) years to start using his trademark in commerce. Extensions must be filed every six (6) months.

STEP NINE: Acceptance of Statement of Use – Once the Statement of Use is formally accepted, the application moves toward the final phase of the application process, Registration. If the Statement of Use is problematic, an Office Action will be issued. The applicant has an opportunity to correct the issue via a Response.

STEP TEN: Registration Certificate – The registration certificate issues to NTC and we will advise you of this, and the proper use of the trademark. We also will supply you with the post-registration maintenance dates and requirements.

1 What is a class? A class is a particular group of goods or services, already categorized by the USPTO. Toys are in one class, while restaurant services are in another. Some marks fall into multiple classes. This will affect the cost of the trademark application and subsequent declarations of use.