Here we will discuss the Trademark Registration Process from the very beginning stage till its grant and maintenance. But let us first learn what differentiates a trademark from its counterparts- Patent and Copyright. A trademark is simply a mark that works as an identification symbol for the goods and products of a company. Moreover, it works as a recognition factor by differentiating the products of one company from the rest.
On the other hand, a patent protects an invention, and copyrights guard original artistic and literary works. So if you invent a new type of the computer, you will get a patent to protect the invention. You will go after a trademark to give a name to the computer in order to sell it in the market. Moreover, you will go for a copyright for the TV commercial of that computer. Therefore, a trademark essentially works as a brand name for a company.
With this brief overview on trademarks, now let’s move on to how you can register a trademark.
Also Read: Trademark Filing in USPTO: Important Things to Remember
The USPTO Trademark Registration Process
Registering a trademark becomes a daunting task for some people when they are not equipped with the right procedure of filing it. There are a few things of great importance that one needs to consider before going for trademark registration. It will save you time and money at the time of trademark registration.
(Step1) Pre-Registration
There are many things you need to consider before proceeding with the trademark registration process. First, determine if you actually need a trademark for your company or a registered business name is enough to identify your company.
(Step 2) Trademark Selection
The second milestone in the registration process is mark selection. This involves selecting a distinct mark that works as a symbol of identification of your company.
(Step 3) Trademark Search
USPTO offers the Trademark Electronic Search System (TESS), a search engine that enables people to directly search a mark from the USPTO database. Refer to the Design Search Code Manual if your trademark is essentially an innovative design. You can locate a design by using a design code in the manual.
(Step 4) Trademark Application:
You can file a trademark application to the USPTO through the Trademark Electronic Application System (TEAS). The filing process is both online and offline and the fee falls under the bracket of $225-$600.
Note: there is no refund for the filing fee, even if your trademark registration request gets rejected.
(Step 5) Application Monitoring
Don’t just forget after filing your application. Keep a strict vigilance over it, monitor its progress as it goes through the process of prosecution. You can keep a check on the Trademark System and Document Retrieval (TSDR) System every 3-4 months. Also, timely review and respond to office actions within 6 months of the date of issue.
(Step 6) Registration Maintenance
You land on this step when your trademark registration gets approved by the controller of the trademark office. Once you receive your registration certificate, timely file all the relevant documents for its maintenance. The count of deadlines starts from the date mentioned on the registration certificate.
International Filings
If you are looking for trademark registration in multiple countries, there is a set of rules for the same. The Madrid Protocol is an agreement for the international registration of trademarks. Through the Madrid system, you file one international application, in one trademark office, pay a single set of fees and simultaneously seek protection in 120 countries.
Also Read: Trademark Filing Essentials: Must Follow
Category of the Distinctiveness of Trademarks
Fanciful marks
This is an inherently distinctive mark that has no meaning before it comes in association with a company. For example, KODAK, Pepsi, Xerox had no meaning before they got adopted by the respective companies.
Arbitrary marks
An arbitrary mark is generally a word or image with a dictionary meaning. But, it is not particularly suggestive of the associated product. For example, ‘Apple’ is an arbitrary mark for Apple computers.
Suggestive marks
It is quite evident from the name, a suggestive trademark ‘suggests’ or gives an indication of the product and services that a company offers. For example, ‘Acoustic Research’ for stereo loudspeakers, ‘Habitat’ for home furnishing is suggestive of the products and goods they are in association with.
Descriptive marks
This type of mark clearly describes the characteristics of the products that the company offers.
Generic terms
These are the general terms that became significant due to their popularity. Moreover, they are synonymous with a general class of product or service. For example, Chapstick, Band-Aid, Frisbee, Fevi-quick, Google, etc. are some of the generic trademarks.
Also Read: Trademark Filing Fees: A Quick Overview
The Mark Format
This section talks about the form in which you present your trademark. That is, a trademark is eligible for registration if presented in the following formats:
- Design Marks: these are the stylized marks in the form of words, designs or both. The USPTO accepts .jpg file format and dimensions are 250-944 pixels long and 255-944 pixels wide. The dimensions for scanned image is 300-350 dots per inch (dpi). Examples include Mercedes, Chanel, Nike logo and many more.
- Color marks are a bit difficult to register as you need a proof of acquired distinctiveness. For this, file a color claim and name those colors and mention wherever they appear in the overall design of the mark. Examples include Cadbury Purple, Barbie Pink, and Tiffany Blue, etc.
- Shape marks: talk about the 3-D configuration i.e. the overall shape and design of the article/product. Examples include the shape of the Coca-Cola bottle.
- Sound marks: are in the form of audio (size- 5 Mb max.) and video (size- 30 Mb max.). Additionally, the acceptable format is .wav, .wma, .wmv, .mp3, .mpg or .avi. All the sound files are in .mp3 format in the USPTO database. Accompany the audio and video file with a detailed description of the sound. Examples include default ringtone of Nokia, Yahoo’s Yodel, etc.
Also Read: Online Trademark Filing: Know How to do it?
Points to Remember while Trademark Registration
The trademark registration process seems like a daunting and lengthy task. But, there are a few ways that will make your trademark registration itinerary comparatively shorter and hassle-free.
- Taking due help of an attorney is a wise decision from the very first stage of registration. Their legal guidance and itrations make the process hassle-free.
- Do not take the trademark search step lightly and directly file the application. There is always a chance that there already is a similar if not exactly the same trademark already in use.
- Be mindful of your ‘trademark filing-basis’ before going for registration.
- Always be mindful of the fact that a trademark registration is wholly and solely for the purpose of business. You will not get trademark registration certificate for personal use.
- Clearly emphasize the products for which the trademark you are going to use. Or for the service for which the servicemark you opt for.
Also Read: Trademark Filing Basis: Things to Know
What do we offer?
You must not want to fall prey to the complications of the trademark registration process. While looking for guidance for trademark search and filing you have come to the right place. At the Trademark Filing Company, we provide complete assistance to our clients throughout the trademark registration process. Also, we provide post-grant services and free iterations until complete satisfaction. We assure you efficient and dependable services that too at pocket-friendly rates. To know more about services, do visit The Trademark Filing Company.
Other Related Articles
Importance of Trademark for Businesses