4 Things You Need to Know About the US Trademark Registration Process
So you did your homework and came up with a great trademark for your new company. Now you need to protect it by registering your trademark with the USPTO. Here are some things you’ll need to know about the application and registration process.
1. The trademark registration process takes time
It takes approximately 3-4 months before your application is even assigned to a trademark examiner for review, and another 1-2 months before you hear anything back from the examiner. That means you’re looking at 5-6 months to get to the first hurdle —the examiner’s review. If you pass the examiner’s review with flying colors, your application is then “published for opposition” —which means it can be opposed by others who believe your mark is confusingly similar to their mark. If no opposition is filed against your application in the 30-day opposition period, you’re usually in the clear.
Assuming your application passes the examination stage and the opposition period with no issues, your mark is typically registered within 6-8 months from the time you file the application. That’s the best case scenario. If your application is held up for one of any number of reasons, it can take longer to get your trademark registered, sometimes years longer.
2. You can file a trademark application before you launch your website or begin using your trademark publicly
There are two types of trademark applications. A 1A application, which is based on existing “use in commerce” and a 1B application, which is based on intended future use of a trademark, aka an “intent to use” application. If you are already using your trademark publicly, such as via an e-commerce website, you’ll most likely use a 1A application. In the 1A application, you have to identify the date you first began using your trademark to advertise and sell your goods and services. That date will be important to determine priority if anyone were to challenge your mark by claiming that they were using an identical mark first.
The “intent to use” application can be filed before you begin using your trademark publicly as long as you legitimately intend to use the trademark in future. The main benefit of the 1B application is that you can effectively “get in line” and reserve your rights to a trademark before you’re ready to launch your website, for example. If your application is ultimately approved, the date you filed the application becomes the date for determining priority if your trademark is ever challenged —even though you may have launched your website after you filed the trademark application. In other words, the “intent to use” application can help to prevent and deter others from registering a trademark like yours before you’re ready to launch.
3. You should buy all relevant domain names that you may want to use before you file your trademark application
Online trolls often scan trademark filing records, particularly the “intent to use” applications, and buy up any domain names that are related to new trademark applications. Then they jack up the price of the domain. Yes, this is cybersquatting. Yes, it is illegal. However, you can’t do much about it unless and until your mark is registered, and by that point they may have sold to another high bidder. The easiest way to avoid this issue is to make sure you buy all domain names you might want before you file an intent to use trademark application.
4. An attorney can help you prepare a stronger trademark application
The trademark application is not rocket science, but it isn’t intuitive for a first-time filer either. If you work with a lawyer, you don’t have to spend hours trying to figure out the nuances of the application. A good lawyer will help you determine what classes of goods and services to include, how to describe your goods and services to help differentiate your application from potential conflicts, and how to respond to office actions from your trademark examiner.
The USPTO doesn’t give refunds, so you could lose your original filing fees if you make a mistake and ultimately have to refile your application. More importantly, new conflicting trademarks that may prevent your trademark from being registered could be added to the queue or even registered between the time you DIY file your application and the time you have to refile due to an avoidable mistake.
Give us a shout before you try to DIY your trademark application!
*This blog provides general information for educational purposes only. It is not intended to constitute specific legal advice and does not create an attorney-client relationship.*