This is the seventeenth in a planned 20-part series of articles on intellectual property. In future posts, we will explore copyrights.
In this posting, we will take a look at how to register your trademark with the US Patent and Trademark Office (USPTO).
As noted in our last post, a trademark protects a word, phrase, symbol or design that is used to distinguish one source from another. Registering trademarks with the USPTO means you have a “legal presumption” of ownership of the trademark. It’s an important distinction, as we discussed in the previous posting.
The process to obtain a trademark is well-explained at the USPTO website here: http://www.uspto.gov/trademarks/process/index.jsp. Below, we’ve provided a shortened, summarized version of what the USPTO has already published at the link above.
The applicant should begin with a search of the USPTO trademark database, to make sure that no one else has already registered the mark for use in your field. This can be done at: http://tess2.uspto.gov/bin/gate.exe?f=tess&state=4003:a9kk1u.1.1.
Assuming you find that no one else has laid claim to your mark, the next step is to complete an application, which can be done online at the USPTO website. It is not too complex, but still you may want to enlist the help of an attorney or an online legal website, such as LegalZoom.com. This will cost you more, but you will be assured that the application will be filed correctly.
There will be a “basis” for filing that you will need to identify – that is, whether you are currently using the mark in commerce or whether you have an “intent to use” the mark. In addition, there is a filing fee, which will probably be between $300 and $400, depending on a number of things. The schedule of fees for the USPTO can be found here: http://www.uspto.gov/web/offices/ac/qs/ope/fee092611.htm#tm
The USPTO will review your application and, if the examiner finds a reason not to allow the trademark, he or she will issue an office action (i.e., a letter) to you explaining his or her finding and the reason(s). The applicant has six months to respond or the application will be considered abandoned.
If the examiner has no objection (or the applicant overcomes any objection(s)), the trademark will be published in the Official Gazette, giving others 30 days to object to the mark. If there are no objections, and the basis for the filing was that the mark is already used in commerce, “the USPTO will normally register the mark and issue a registration certificate about twelve (12) weeks after the date the mark was published. After the mark registers, the owner of the mark must file specific maintenance documents to keep the registration live.” [1]
If the basis was an “intent to use”, then the USPTO will send a “Notice of Allowance”, giving the applicant six months to file a “Statement of Use”, showing the use of the mark in commerce, or file an extension. There is a fee for filing the Statement of Use.
The full cost of obtaining a trademark will vary from under $500 (for a straightforward filing based on current use in commerce) to much more if the applicant decides to use an attorney. We have found that, for trademarks, using a service such as LegalZoom is easy, straightforward and cost effective. However, if there is a greater level of complexity involved, or if one fears an office action for some reason, it is best to utilize the services of a qualified attorney.
In future postings, we will look at copyrights.
[1] http://www.uspto.gov/trademarks/process/index.jsp
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