How to Register Your Trademark With the US Patent and Trademark Office

After spending days, maybe even months, thinking it over, you've finally picked a trademark for your business. It's a big deal – this is the mark that will represent your company. But here's a crucial question: can you legally stop others from using your trademark, not just in your local area but beyond?

Well, not quite yet.

To do that, you need to register your trademark with the United States Patent and Trademark Office (USPTO). Let me walk you through how to get this done:

Step 1: Choosing Your Trademark

Before diving into registering with the USPTO, the first step is picking the right trademark for your business. Need some guidance? Take a look at our blog post on key factors to consider when selecting a trademark for your products and services.

Step 2: Making Sure the Trademark is Truly Yours

You might have a great trademark in mind, and perhaps you've even followed the advice from our blog. However, the real test is ensuring that your trademark doesn't overlap with any existing ones. This is crucial because the USPTO will reject a trademark application if it's too similar to another, leading to potential confusion.

Now, you might think you can just do a quick search on the USPTO's website, but here's the catch – the USPTO uses sophisticated software and experienced examiners who will likely uncover far more potential conflicts than you might find on your own.

The smart move? Hire a professional trademark search firm to conduct a thorough search. They'll use advanced tools to scan for any conflicts. Once they've gathered the data, it's wise to consult with an intellectual property attorney. They can help you sift through the results and understand the implications for your trademark.

Step 3: Preparing Your Application

Alright, you've got your trademark picked out. Now, it's time to get down to the nitty-gritty: preparing your application. Here’s what you need for a standard application when your trademark is just words:

• A clear description of the goods or services linked to your trademark.
• A breakdown of the specific international classifications for your goods or services.

And if you’re already using the trademark for selling or marketing your products or services, you’ll need a couple more things:

• Proof that you’re currently using the trademark.
• The exact date when you first used the trademark in commerce to sell or market your goods or services.

Step 4: Filing the Application

You’ll need to set up an account on the USPTO website to file your trademark application. To get your account up and running, you'll need to confirm your identity, which can be done either online or offline.

Once your account is all set, you can move on to filling out the online application form through the Trademark Electronic Application System (TEAS). It’s a pretty straightforward process, and once you submit your application, you're on your way to securing your trademark.

Now, You Wait

After you've submitted your application, the USPTO assigns an attorney to review it. If everything checks out and they have no concerns, they'll move forward with a "notice of allowance." But, if there are any issues, you'll get something called an “office action”.

Sometimes, responding to an office action is as simple as making a quick phone call or shooting off an email. Other times, it gets more complex. You might need to submit a formal response with legal references, regulations, and a bunch of exhibits and other evidence to back up your case. If you get an office action, it's smart to reach out to an intellectual property attorney for advice.

If you miss the deadline to respond or if you can't address the trademark examiner's concerns, your application could be rejected or abandoned. But don’t worry, there's still a chance to appeal through the Trademark Trial and Appeal Board (TTAB).

If you get the notice of allowance, the USPTO will publicly announce your trademark. This gives anyone with an issue 30 days to raise an objection. If someone does object, you’ll need to sort it out through the TTAB.

Assuming you clear any hurdles from the USPTO or third parties, and you've shown solid evidence of using your trademark, the final step is registration by the USPTO. And that's a big win—congratulations!

Conclusion

So there you have it, a rundown of the steps you should take when filing a trademark application with the USPTO. Keep in mind, the details are what make or break the situation. Be careful, do your due diligence, and do a trademark search before filing your application.

Are you wondering about any of the issues mentioned above? Please email us at info@wilkinsonlawllc.com or call (732) 410-7595 for assistance.

At Wilkinson Law, we give business owners the documents and advice they desperately need to fund, grow, protect, and sell their businesses. We are trustworthy business advisors keeping your business on TRACK: Trustworthy. Reliable. Available. Caring. Knowledgeable. ®