Starting a new business is an exciting experience, but it can also be overwhelming because there are numerous questions and concerns. One question for a new business owner should be: "How can I protect my company's unique brand and stand out in the marketplace?" One effective answer is to file a trademark application because a registered trademark can help businesses stop copycat competitors and counterfeiters.

This article provides the necessary background information for safeguarding a business's unique brand and its goodwill with customers.

What is a Trademark?

A trademark is a distinctive symbol, name, or phrase that consumers use to distinguish the goods or services of one business from the goods or services of a competing business. In other words, trademarks are source identifiers that tell consumers who provided the goods or services. To this end, trademarks establish a brand identity, making it easy for customers to recognize goods or services that they like. Trademarks, particularly, registered trademarks, are legally protected, which ensures no one else can take advantage of the protected brand for their own benefit.

The following steps should be taken to register a trademark with the U.S. Trademark Office.

Step 1: Conduct a Thorough Trademark Search

As explained in more detail here, it is considered a best practice to search federal and state trademark databases before committing to a name for a new business, product, or service. Many people starting a business fall in love with a potential brand name, so it is critical to conduct a trademark knockout search early in the process, i.e., before registering a business with the state or ordering thousands of units of product from a supplier. The opposite approach—i.e., waiting for a convenient time to search for other trademarks—could end up costing a business significantly more time and money in the end; especially if the business receives a nasty cease and desist letter from an attorney representing a third party or is served with a complaint outlining your trademark infringement to a federal court.

Step 2: Determine the Trademark Type

If the results from a trademark search are positive and there is a reasonable chance of success at obtaining registration, then the next step is to identify what the trademark is used in connection with. Specifically, one must consider whether the trademark is used with a good that consumers can take possession of or a service for which there may not be a tangible item. This sounds simple right? If a business is selling potato chips packaged for sale in a grocery store, then the trademark on the packaging identifies the source of the chips. But what if the potato chips are made fresh and sold in a restaurant—is that a good or a service? The preparation and serving of potato chips in a restaurant is actually a service. In some situations, one must take care to consider whether a good or service is offered in connection with the trademark.

In a trademark application for registration with the U.S. Trademark Office, every good or service is classified into one of 45 international classes according to the Nice Agreement. International classes 1 through 34 are for goods and classes 35 through 45 are for services. In the example above, potato chips are classified in Class 29 and restaurant services are classified in Class 43.

If a trademark application is filed in the wrong class, the application cannot be corrected later and the applicant cannot get a refund. This step in the process is critical.

Step 3: Choose the Correct Filing Basis

The next step is to determine whether the application should be filed as a current use or an intent-to-use application.

A current use application is filed when the trademark is already being used in commerce, meaning goods or services have already been sold in connection with the trademark. A current use application requires evidence of use, such as photos of the goods on the shelf of a store, product labels, webpage screenshots with a means to purchase, or other similar evidence that demonstrates the trademark on the goods or service in the application has been used in commerce.

An intent-to-use application is filed when the trademark has not been used in commerce but the applicant has a bona fide intention to use the mark in commerce in the near future. At the time of filing, no proof of use is required. But after the application has been allowed by the Trademark Office and the trademark has been used in commerce, the applicant will need to submit a "Statement of Use" along with evidence of use.

Click here more information on current use and intent-to-use application.

Step 4: Prepare and Submit the Application

A lot of information needs to be gathered before preparing a trademark application. For example, a trademark application requires an applicant to include ownership information, correspondence information, an identification of the goods or services used in connection with the trademark, the date of first use of the trademark, evidence of the goods or services being used in commerce, among other things.

While completing a trademark application, the applicant must consider whether to include a personal home address or email address because that information can become publicly available. Applicants must determine who should own the trademark: an individual, a company, a holding company, etc. And applicants must determine whether their evidence of use is acceptable for a good or service listed in the application. How a trademark application is completed will have significant ramifications and should not be dismissed as merely a ministerial task. 

Step 5: Monitor the Application and Respond to Office Actions

After a trademark application has been filed with the U.S. Trademark Office, it will remain pending until it is assigned to a trademark examining attorney. The Trademark Office historically had a relatively short waiting period of only a few months. But in recent years, since around 2020, the waiting time has ballooned to about 9 months.

From time to time, the USPTO publishes new data and statistics on the trademark pendency wait period: here. Recently, the USPTO began publishing a notice on the trademark webpage showing which applications, based on filing date, are currently under examination. This information has been pretty accurate so far.

Step 6: Maintain the Trademark Registration

A trademark can remain registered for as long as it is used in commerce. But that doesn't mean owners are done with the USPTO. Trademark owners must submit a declaration that the mark is used, and has continuously been used, in commerce every few years. 

As explained in detail here, a trademark owner must file a Section 8 declaration, specimen, and fee on a date that falls on or between the fifth and sixth anniversaries of the registration (or, for an extra fee, you may file within the six-month grace period following the sixth anniversary date). Failure to file a Section 8 Declaration will result in cancellation of the registration.

The trademark owner must also file a Section 8 declaration, specimen, and fee on a date that falls on or between the ninth and tenth anniversaries of the registration, and each successive ten-year period thereafter (or, for an extra fee, you may file within the six-month grace period). The trademark owner must file a renewal application within the same period (or, for an extra fee, you may file within the six-month grace period following the registration expiration date). Failure to file this document will result in cancellation or expiration of the registration.

Additional Tips

The best tip: don't go at it alone. Work with an experienced trademark lawyer who can make sure the application is filed correctly the first time, and who can respond to Office actions when received the U.S. Trademark Office.

Contact an Experienced Trademark Lawyer

If you want to protect your business name, products, services, tagline, or slogan, with a trademark registration, or have any questions about the trademark process generally, then schedule a free consultation with Nolan IP Law today!

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