Applying for a trademark

Process for applying a trademark

1. Picking a trademark
2. Research
3. Use in commerce/Intent to use
4. Application
5. Approval
6. Renewal fees

Picking a trademark

When deciding what trademark to use, a owner should understand the strength of the trademark. There are varying levels of trademark strength depending on the words themselves. The following list are the various levels from strongest to weakest types:

1. Fanciful marks – made-up terms invented for the purpose of being a trademark.
2. Arbitrary marks – real words with a meaning not associated with the product or service.
3. Suggestive marks – A word that suggests the characteristics of the product or service but does not describe the product or service.
4. Descriptive marks – A word that merely describes the product or service.
5. Generic marks – a word that defines a product or service.

Trademark business considerations can be found here.

Research your trademark

Trademark research will provide an understanding of the risks of trademark infringement. Research will include searching the USPTO Trademark Electronic Search System, the Secretary of State website for your state, and any additional researches including the internet.

The reason for this search is to understand whether there are other businesses using the same or similar trademark. A determination should be made whether the is a likelihood of confusion between the two marks.

Use in commerce or Intent to use

Before filing the applications, it is important to know whether the trademark has already been used in commerce or there in an intent to use. A product that has already been used in commerce will have a stronger right than those registered with an intent to use.

If an application is filed as intent to use, once the trademark starts to be used in commerce, a form can be filed to change the basis from intent to use to use in commerce. It is important to file such forms to have a stronger trademark right.

Application components

Determining whether to file a Teas Plus or a Teas Standard application. The Teas plus application is cheaper, however, there are requirements that must be followed.

1. Applicant information – Trademark owners information.
2. Enter the mark – The mark can just be words or it can be a design mark.
3. Select or input the goods/services the the mark identifies.
4. Select the filing basis for the mark – non foreign applications will likely select either Section 1(a), actually using mark in commerce now, or Section 1(b), no use of mark yet but intending to use.
5. Review the statements and sign the document.
6. Pay the fee.

Approval

Once the application is submitted, the trademark office will review the application. If there are any issues with the applications whether substantive or procedural, the examining attorney will send out an office action. Once the issues are resolved or there are no issues, the application will go out for publication.

Publication will make the trademark public for others to oppose. Typically, companies that believe the trademark infringes on their trademark will file an opposition. The publication period is for 30 days.

Once the publication is over, the trademark is approved. The owner will then receive the official trademark certificate in the mail.

Renewal fees

To keep your trademark alive, a declaration of use and an application for renewal between the 9th and 10th year after the registration date, and every 9th and 10th-year period thereafter.