Registering a federal trademark isn't just a one -- step application process resulting in your being able to put the registered symbol after the mark. The process of obtaining and maintaining a trademark is actually a five part process. This brief article and accompanying flowchart should help you understand the process involved in obtaining and maintaining a trademark.
1. Search Phase (Top Left)
Prior to registering a trademark, or even beginning to use a mark, a person should perform a trademark search. A search of federally registered marks (a direct hit search) can be performed on the uspto.gov's TESS database. http://www.uspto.gov. Just because there is no mark that matches exactly doesn't mean that the mark is available. The Lanham Act provides for protection in limited areas for so-called common law trademarks. A common law search can uncover some of these potential obstacles as well. Of course, in order to determine whether or not a mark may be infringing, hiring an intellectual property attorney is invaluable, as they are accustomed in determining whether or not something is "confusingly similar" to other marks. After a search, comes the application phase.
2. Application Phase (Top Right and Second Row)
Once you've decided to pursue an application for a mark, you have to decide whether you've used the mark in interstate commerce before, or you intend to within six months. If it has been used, you will pursue a "use" application. (Right Side) The application will be filled out and filed with the USTPO. If you've not used the mark in interstate commerce, you file an intent to use application. (Left Side) Upon the mark being used, you file a specimen of use with the USPTO. Sometimes this occurs prior to the approval of the application. Regardless, the specimen must be filed within six months of the allowance of the intent to use application. If not, the time can be extended up to three years, but only the first extension is given without cause, and all of them cost extra in fees.
3. Examination and Response Phase (Rows 3,4,5)
Once the application is filed, it takes about five to six months for the examiner to be assigned and review the application. 40% of the time, the examiner will approve the mark without changes. Another 40% of the time, the examiner will refuse the application on the minor technical issue. About 20% of the time, there will be a refusal based upon a substantive issue.
When an examiner refuses an application, he or she will issue an Office Action. What you or your attorney must do is provide a Response to the Office Action, addressing the examiner's concerns regarding the registration. Once, and if, the issue is resolved the mark will enter into the publication phase.
4. Publication and Opposition (Row 6)
The mark will then be published for opposition for four months. Opposition is rare, 3 -- 4 % of the time, but when it does occur, a quasi-litigation type scenario develops. Such proceedings are beyond the scope of this guide. After the publication period has passed, and any opposition proceedings have ended, the registration is complete and maintenance begins.
5. Registration and Maintenance (Last Row)
After a successful publication period, the mark is registered. Congratulations, you can now use the (R) symbol on your mark. After six years you'll need to file a combined Section 8 and Section 15 affidavit. Further, every additional 10 years, a Section 9 filing will be required.
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