Getting a registered trademark takes about a year or more. What is involved? The process is called Trademark Prosecution. Statistics say about 50% of trademark applications fail. You can increase the likelihood of success by knowing what the process is all about. If you know what to expect, you can work better together with your trademark lawyer.
Most people start out with a name that they want to have as their trademark. It might be the name of their business or the name of the goods or services they are selling. Or they might have a logo that they want to register as their trademark. Some people have a slogan they want to register as a trademark.
The first phase of trademark registration is where we look at the proposed trademark and figure out how likely it is to succeed registration. This involves searching for registered or pending trademarks with which it might conflict. We also look at the proposed mark and analyze if there are any rules that might prevent it from being registered. If a trademark is "merely descriptive" of the goods or services, it might not be able to be registered, or it might work if the descriptive words are disclaimed. Or it might be able to go on the Supplemental Register.
If the proposed trademark is "primarily a surname," there might be ways to make it more than a surname or to show it has other meaning. If a proposed trademark is "geographic," it may have acquired secondary meaning - or it may be able to go onto the Supplemental Register. If the trademark is naming a food or a wine or other alcoholic beverage, there are other rules. If the proposed trademark names a product or service involving or promoting marijuana or THC, it probably cannot be registered, but there are rare exceptions. Trademarks for goods involving hemp have complex, detailed rules. And on and on.
There are hundreds of bits of minutiae in what can and cannot be a registered trademark - and what the goods and services can or cannot be. For example, if it is a service, it must be "for others." For example, if you are editing your own books, that is not a service. However, the books are probably goods that can have a trademark.
The trademark has to follow all the rules about the goods and services and also must meet the qualifications of the trademark itself.
A logo is called an image trademark. There is a whole list of rules on how many pixels tall and how many pixels wide the image mark can be. There are design specifications that the logo must meet. If you plan to create a trademark image or logo, you should consult first to be sure your logo will meet the requirements, which are not optional. If your logo does not meet the specifications, the Trademark Office upload system will reject it.
The logo image needs to be put on an image searcher to see if the design conflicts with an existing or pending image mark for similar goods or services.
If it seems unlikely that the proposed trademark will succeed at registration, we look into adjustments that make it more likely to succeed, or look for alternate words or images that are more likely to succeed.
If the proposed trademark seems likely it will succeed at registration, the next step is to choose the exact listings of the goods or services. Usually we start out with a strong idea of the Classes of goods or services that the trademark will be used with. The US Trademark Office divides all goods or services into 45 International Classes. There are 34 Classes for Goods and 11 Classes for Services. Each Class has many specific Listings that go under it. A Class may have hundreds or even thousands of Accepted Listings. The Listings must be accurately chosen. After the application is submitted, the Listings can be narrowed from the one(s) originally chosen, but they cannot be expanded. As an imaginary example, let's say the listing you chose was "Cakes." You might be able to narrow it to "layer cakes," but you won't be able to expand it to "desserts."
Once we have the proposed trademark words or images and we have chosen the Classes and Listings, if it all looks like it is likely to succeed at registration, we prepare to put in an application. There are basically 3 types of trademark applications. A trademark that is based on an existing foreign registration is called a Section 44 registration. A foreign company seeking a US Trademark is required to have a US-licensed attorney prosecute their trademark. In many cases, the foreign applicant must have the US attorney, as well as the attorney from the other nation who knows about the international registration. Proof of the foreign registration must be filed with the US Trademark Office and the most likely source for the correct paperwork is the trademark attorney from the other nation. From my observation, it looks like most applicants trying to register a trademark under Section 44 of the Lanham Act fail. The problems seem to start with the applicants not having a required US attorney and not having proof of the foreign registration, and then possible conflicts with existing US trademarks or not meeting the myriad US Trademark rules. I often think these applicants might be better off simply seeking a US Trademark rather than trying to carry over a foreign trademark. That isn't legal advice and won't benefit everyone.
The other two main bases for US Trademark registrations are the 1A, Already in Use, and the 1B, Intent to Use. If the trademark is already in use in commerce, it is a 1A. The 1A process is faster and less expensive. The application is submitted, along with the allegation of use and the specimen, which is proof that the trademark is in use in commerce. This is usually a jpeg or pdf showing a picture of the trademark in use. The specimens for goods are different than the specimens for services. Each has requirements that must be met. Once the application is checked by the Examiner, if it meets all requirements, it goes to Publication, where anyone can object. If it makes it through Publication without objections, it will head toward certification. The whole process takes about a year, if all goes well.
The 1B Intent to Use application is submitted without an allegation of use and without a specimen. The Intent to Use application says that the applicant plans to use the trademark once they get their goods or services up and into commerce. For example, they may need to start making the goods or offering the service. The application goes in and the trademark is checked for Conflicts with other existing and pending trademarks, and also analyzed to see if it meets all the other qualifications. Then it goes to publication to give others a chance to object. If it meets all these requirements, then it is given a Notice of Allowance, an NOA. The applicant has 6 months after the NOA in which to file an Allegation of Use and a specimen for each Class of Good or Services OR to file for an extension of time to get 6 more months in which to get the goods or services into commerve and file the Allegation of Use and specimen. Five extensions of time can be had for good cause, adding up to 3 years total.
Tech people may need to know what "in commerce" means. For example, if a website or app or other service is in Beta testing, it is not "in commerce." It must be open and available to the general public. If the general service is open to the public, but there is beta testing and development ongoing for an ancillary part of the service, it might be "in commerce.' These things are decided on a case-by-case basis by the Examiner, and it sure helps if your Trademark Lawyer knows what they are doing.
The US Trademark Office no longer sends out printed certificates unless a presentation copy is ordered and paid for. Instead, it provides pdf files so you can print your own. This system seems better because they always sent the paper certificate in a thin brown envelope and it got crumbled up in the mail. This way, you can print one whenever you want or need one and on whatever sort of paper makes you happy.
If you look at the Trademark database, you will notice a lot of trademarks go through a 2, 3 or even 4 year journey to get registered. This often happens when an application is suspended for a period of time to see if a different application that has precedence before it succeeds or fails at registration. The registration process might also take this long if it is a new area of trademark law, such as the recent acceptance of some hemp goods or services.
Another thing you will notice in the database is that a great many trademark applications fail. Worse than failing, I think, is a trademark application that sparks formal objections or a lawsuit. There are some longstanding wealthy trademark owners that are known to file Objections against any applicant with a similar mark, regardless of whether it could reasonably be considered to be in Conflict with their mark. It pays to have a trademark attorney who checks in advance to alert you that you may be walking into dangerous territory. These kind of trademark protectionists are not likely to win on the facts, but they can usually outspend the start-up applicant filing for their first trademark. It's best to see this coming and perhaps choose a different trademark before running headlong into a minefield. When I work on a trademark, I do all sorts of cross-checking to see what might lie ahead.
Once you have a registered trademark, it can be a very valuable asset. It is what you make it. It against more value the more you use it.
Your trademark registration is good for 5 years, and then must be renewed and a fee paid between the 5th and 6th year. Then it gets renewed again in five more years and then every ten years. As long as the trademark gets renewed, it can last as long as you keep using it. Famous old trademarks have lasted far longer than the people who first conceived them and registered them. On the other hand, many trademarks do not make it to their first renewal, as the businesses fade out or people die.
Trademarks are the symbol of the business. Every new business needs at least one trademark. The name of the company is the most common first trademark. Next would be a logo or image mark that contains the company name. Then, names of the goods or services sold by the company. Next are slogans that help promote the goods or services. Colors, trade dress, and sounds can also be registered as trademarks. It is a big magical world you enter into when you apply for your first trademark.
Feel free to email me with any questions about trademark. I LOVE talking about trademark!
Photo by Clark Tibbs on Unsplash
