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Doug Cook is retiring and Steve Cook has moved to an in-house counsel position. As such, we are no longer accepting new clients. Thank you.

U.S. Trademark Registration Process

Although the description of the trademark process listed below is fairly detailed, it is by no means comprehensive and not a substitute for individual advice from a competent professional.

Typically, the process by which a domestic trademark, i.e. originating in the United States, is federally registered consists of the following steps:

Trademark Selection

Federal law places restrictions upon what types of trademarks can be federally registered so as to receive federal trademark protection.

In order be registered on the United States Patent & Trademark Office's ("USPTO") Principal Register, which provides substantially more protection than the Supplemental Register without first achieving secondary meaning or acquired distinctiveness, trademarks must be distinctive and cannot be merely descriptive, misdescriptive, primarily merely a surname, primarily geographically descriptive, geographically misdescriptive, or likely to cause confusion among the public.

In addition, trademarks cannot "consist of or be comprised of "immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute..." 15 U.S.C. § 1052(a).

Trademark Clearance Search

In order to avoid confusion, which is a basis by which the USPTO can reject a trademark, trademark applicants perform either a "knock-out" or comprehensive trademark search.

Although there is no set formula for a knock-out search, such searches are generally limited to queries of the USPTO's TESS database, queries via search engines, and queries of the WHOIS database.

In stark contrast, a comprehensive trademark search often includes common law, state law, ad regulatory sources. In addition, comprehensive trademark searches are often accompanied by an opinion letter from an attorney as to trademark-ability.

Trademark Application Cost

Applications for domestic trademarks originating in the United States are filed with the United States Patent & Trademark Office. The fee for electronic filing, which is less than for paper filing, is currently $325 per trademark class.

Trademark Application Basis

One peculiarity of the U.S. Federal System is that a trademark must first be "used in interstate commerce" before it can be registered on the USPTO's Principal Register. That is not to say that trademark applications cannot be filed without first using a trademark in commerce; rather, such an application is called an "intent to use" trademark application and the mark must be used in commerce within a certain time period after the trademark has been examined and approved for registration.

The USPTO has published the following interative timelines on it website, which provide significant detail about what a mark owner can expect during and from the registration process:

It's important to note that neither timeline covers every application scenario.

USPTO Examination

About three (3) months after a trademark application is filed, it is assigned to a trademark examiner at the USPTO. Within three (3) months after an application is assigned, it will be reviewed by the assigned trademark examiner, generally; however, this review can be significantly shorter.

USPTO Office Actions

Unless there are no issues associated with a particular trademark application, the trademark examiner will issue an office action that effectively refuses registration and cites a basis for such refusal. A trademark application must, generally, respond to an office action within six (6) months after it is issued, otherwise the application is deemed "abandoned". Abandoned application can be revived, for a free, within two (2) months of the abandonment date.

Publication & Opposition

If no office action is issued or the trademark applicant satisfies the requirement of the office action, the trademark will be approved for publication in the USPTO's Official Gazette. About one (1) month after an application has been approved for publication, it will be published in the Official Gazette.

An opposition to a trademark must be filed within thirty (30) days after publication in the Official Gazette.

It generally takes about three (3) months after publication for a trademark to issue if there is no opposition to the trademark; however, if there is opposition the trademark will not issue until the opposition has been resolved in favor of the applicant by the Trademark Trial & Appeals Board.

Declaration of Use

Before the end of the six (6) year period after registration, or within the six (6) month grace period subsequent the expiration of the such six (6) year period, a trademark owner must file a Declaration of Use or Excusable Nonuse under Section 8.

Incontestability

If a trademark has be in use for five (5) continuous years, the trademark owner can file a Section declaration of incontestability, after which point a mark is susceptible only to limited challenges, e.g. the trademark has become generic or the trademark was procured fraudulently. 

Renewal

Within one (1) year before the end of every ten (10) year period after registration, or within the subsequent  six (6) month grace period, the registration owner must file a Combined Declaration of Use or Excusable Nonuse/Application for Renewal under Sections 8 & 9.

Steve Cook is a trademark attorney in Mesa, AZ. Although Cook & Cook's office is located in Arizona, the firm represents clients throughout the United States.

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