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Explaining the Federal Trademark Registration Process

01.12.2022

By Purple Fox Legal

January 12, 2022

Registering a federal trademark is one of the most important steps you will take to protect your business. However, the process can be lengthy, difficult, and confusing. 

This article will walk you through the different steps included in federal trademark registration and the amount of time you can expect them to take. Remember, utilizing an experienced attorney for trademark review and registration can help streamline the process and prevent missteps. 

How Do You Register a Federal Trademark?

Before we get into the process, it’s important to know the overseer of trademark registration in the United States. The Lanham Act and the U.S. Patent and Trademark Office (USPTO) govern the federal trademark registration process. It takes approximately eighteen months to complete the entire federal trademark registration process. This is because your application will need to go through several different stages of review before it may be approved. 

Understanding the steps involved in the process will make your registration easier while helping to prevent complications along the way. There are five main steps involved in the federal trademark registration process.

The Five Steps to Trademark Registration

  1. Determine if a Trademark Registration is Right for You

Before ever filing paperwork or contacting an attorney, it’s essential to take the time to determine whether a federal trademark registration is right for your business. In general, trademarks are important for protecting brand names and logos. 

Remember: Trademarks are not the same as website domain names or business name registrations, and trademarks cannot be used to protect inventions or original artwork. 

Once you’ve done the research and are sure that a trademark is the correct type of protection for your needs, it’s time to begin the next step. 

  1. Prepare for Your Application

While you might be feeling antsy about getting started on your application, the USPTO process begins with some preparation. It’s essential to start by identifying the goods and services for which you will use or are using the mark. Then, you should hire an attorney to conduct a thorough search for any similar existing trademarks. Having an attorney conduct a proper trademark clearance search for your business will provide you with the peace of mind that your brand will not infringe on anyone else’s trademark rights.

Taking the proper precautions to verify that your trademark is not in conflict with any others will save you significant amounts of time and money down the road. You can even consider going through and obtaining a clearance option from your trademark attorney at this stage to have actual proof that there are no significant conflicts. Completing this step in its entirety will help prepare you for submitting your formal application. 

  1. Submit Your Online Application  

Once your trademark has been cleared, it’s time to submit your online application through the Trademark Electronic Application System (TEAS). After submission, a USPTO examining trademark attorney will be assigned to your application. This step alone can take several months to complete. 

The trademark examination attorney is responsible for reviewing your submitted application and ensuring that you’ve complied with all applicable laws, rules, and regulations. This review period will also include a search for similar or potentially conflicting trademarks that would make your application an infringement on another person’s rights. 

The completion of the examining attorney’s review will yield one of three potential outcomes. The examining trademark attorney may decide:

  1. Your trademark should be registered and allow your trademark to move to the next step in the process. 
  1. Your application needs minor corrections and requests you to make those changes. 
  1. Your trademark should not be registered and you will receive a non-final decision letter, or office action, explaining why your application was denied. You will be granted a six-month period to respond to the letter through the TEAS online. If you do not submit a response during this period, your application will be considered abandoned.

Make sure to check the status of your trademark application regularly to ensure that you don’t miss any deadlines. 

  1. The Publishing Period

Once your application moves to the next step, after the examining attorney decides that your trademark should be registered, it enters a thirty-day publishing period. The USPTO will send a letter, which includes the date of publication. During this period, the mark will be published in an “Official Gazette” as a way to notify others of your pending trademark. 

Any individual or company is then granted thirty days to file an opposition to your trademark if they believe that their rights may be negatively impacted. If a notice of opposition is filed against your trademark, then you may be required to participate in a hearing before the Trademark Trial and Appeal Board (TTAB). However, if no opposition is filed within the allotted time frame, then the USPTO will officially register your mark and send you a certificate of registration.  

Remember, it may take up to four months from the time you receive your notice of publication before you receive notice of the advancement of your application. You should continue monitoring your application regularly during this time. 

  1. Maintaining Your Registration

The trademark registration process doesn’t stop after approval. In fact, it’s your responsibility afterward to maintain trademark registration and enforce your rights. While the USPTO will ensure that no one registers a trademark identical to yours, they will not monitor trademark use for violation. That’s your responsibility as the trademark owner. 

The best way to keep your trademark “live” and active, it’s vital to file specific maintenance documents regularly. Some of the most common necessary documents include:

  • Declaration of Use and/or Excusable Nonuse of a Mark (filed between the fifth and sixth year after registration)
  • Combined Declaration of Use and/or Excusable Nonuse/Application for Renewal (filed every ten years after registration)
  • Declaration of Incontestability of a Mark (filed five years after registration)

Failure to file necessary documents within their allotted time frame could result in the cancellation or expiration of your trademark. Once this happens, you will have to file a brand new trademark application. 

If you need a federal trademark registration, consider hiring a trademark attorney to help you through the process.