Trademark refers to any word, phrase or symbol that identifies or distinguishes the product from other manufacturers. Thus, Trademark Filing helps the customer to identify the product and its manufacturer. Moreover, the Trademark provides a brand name to a company.
You must provide proper protection to the trademark to avoid any sort of misuse. Thus, it is necessary to register the Trademark in USPTO (United States Patent and Trademark Office).
Benefits of Trademark Filing:
- Legal ownership of the mark and public notice about the intellectual rights over the claims related to the mark.
- Authority to use the Trademark for the products sold in the respected filed countries.
- Right to take legal actions in case of any infringement.
- Addition to the USPTO database.
The Process of Trademark Filing:
Trademark Filing seems a complex process. So, we have divided the complete process into four major parts. The four major parts are Planning, Selecting the Mark, Submission of Application and Analysis period to Decision.
The purpose of the trademark is to protect physical goods or products. Hence, only the companies that manufacture goods or products or provide services are qualified for Trademark Filing.
There are chances that the company name itself is enough for to serve the purpose of a Trademark and you actually don’t require Trademark Filing. You should also check the native rules and requirements for the trademark before the process of registration.
You can proceed to the next step, once you are done with the Planning process.
2. Selecting the Mark
Before the application for a trademark, selecting a suitable mark is a very important process. Your mark must relate the product and moto behind the product.
However, the most important part is to check whether the mark is eligible for registration or not.
There are 2 basic eligibility requirements:
- Used in commerce:
You cannot use a mark personally. That means you must have business use of the mark. The commerce term signifies the use at Interstate, Intrastate or national level. This means you can use the mark for trading good/products within a state, different states or even different countries.
- Distinctive or unique:
The mark must easily identify or distinguish the related products or goods that are manufactured by a particular source and not by any other manufacturer.
Considerable Points for Trademark Selection:
A word, color, design, sound or shape can form the format of a mark. Also, you can combine different formats to get the required mark. Some of the general types of mark are:
- Word marks: In this, you use Latin characters in place of the letters and Roman/Arabic numerals for defining numbers. Sometimes, it also includes general punctuation marks.
- Design marks: These are the special wordings/design, or a mixture of both. At the time of submission, it must be in .jpg format and you must scan it at 300-350 dots per inch. Also, you must maintain the size of 250-944 pixels at both length and width.
- Color marks: The color marks are difficult to register, as you need to submit the proof of distinctiveness and the logo in the respective color. Also, you should also mention a claim related to the color and maintain the color in the overall mark.
- Shape marks: You must show the three-dimensional shape, design or view of the good/product.
- Sound marks: You should submit the file in different audio formats, for example, .wav, .mp3 or .mpg. Moreover, you should try to limit the audio files up to 5 MB and Video files up to 30MB but with a detailed description.
Related Articles: How To Trademark A Logo?
Applied Goods and Services:
You must clarify the products, goods or services that are going to use the Trademark.
This process involves obtaining the right to use the mark for further steps. This is done to avoid registering marks that are similar to the previously registered marks.
The procedure requires searching the Trademarks registered in the USPTO and 50 different states of the US. However, if you tend to sell the product outside the country, then you need to search the database of the respective countries. You can take the help of USPTO’s TESS (Trademark Electronic Search System) which is free or may check the Trademark Public Search Library of Alexandria.
3. Submission of Application
You must find a filing basis, the moment you are done selecting your mark. There are basically two types of filing basis available:
Use in commerce: This type of filing basis is used when the Trademark is already used or is in current use. However, you must provide proof of using the Trademark.
Intent to use: This filing basis is required when you are not currently using the Trademark but intend to use it in the coming future.
Now it’s the time to prepare the application:
You can find the application forms from the official website of USPTO. It provides you Trademark Electronic Application System (TEAS), which helps to file the application online. You can either use your own internet connection or visit a Patent and Trademark Resource Center (PTRC) nearby.
If you want to file the application offline, you need to pay a processing fee of $375 for each category of goods/services.
At present USPTO have three filing options available according to the fee structure.
You must submit a fee of $325 for each category of goods/products. Also, you must mention the following points in order to issue a filing date.
- Applicants name.
- Applicants address.
- Descriptive representation of the selected mark.
- A list containing complete goods/services of the relevant business.
- Filing fees for at least a category of goods/services.
In this category apart from the general requirements, there are some very strict requirements. Also, you need to submit a fee of $225 for each class of goods/services.
TEAS Reduced Fee:
The filing fee for this filing basis is $275 for each category of goods/services. It promotes pure electronic processing and communication.
NOTE: The filing of the Trademark does not mean that the registration is sure. Sometimes, the filing doesn’t prove fruitful and in that case, the fee is not refundable.
Also, the applicant must pay $50 per category of goods/services, if he/she is unable to match the filing requirements of TEAS Plus/TEAS RF.
4. Analysis Period to Decision
This is the final step for registration that an application must qualify. You must pay attention to a few important points that it contains:
- This step deal with the examination of the application, publishing it in the official Gazette and issuing a registration certificate.
- Monitoring is necessary after the submission of the application. Hence, you need to perform a thorough check with the help of
Trademark Status and Document Retrieval (TSDR) system in every 3-4 months.
- USPTO will assign you an examination attorney and you must provide the complete cooperation that he demands. Also, he will be responsible for the overall review of your application.
- The attorney will contact you if the application requires any rectification. He will first issue an ‘Office action’ and mention the reason to hold the registration process.
- USPTO provides a time period of 6 months to respond to an office action. However, they declare that you are not interested in the application anymore if you fail to do so.
- It generally takes 12 months to complete the examination and issue the registration. However, it may take more time if there are issues like incomplete documents and opposition from another party.
- USPTO will publish your application on the Official Gazette as a sign of approval. Also, they will allow a time period of 30 days for third parties to come up with any sort of opposition.
- In case of opposition, the Trademark and Trial and Appeal board will come into action. Otherwise, USPTO will mark your application as registered and you will get a certificate of registration.
Related Articles: Hire A trademark Attorney: What’s the Need?
How The Trademark Filing Company serves you best?
We have been a pioneer in terms of Trademark filing and services since the last decade. Our team of technical experts and professionals provide you the most satisfying results. Moreover, we provide you the after deal services that helps to deal with USPTO formalities. Also, you get the outcomes within the deadline and at a budget-friendly price. We provide you free iterations until you get what you want. To get a hold of more of our services, please click here The Trademark Filing Company.