A federal trademark registration provides significant protection and advantages to its owner. Which is why thousands of new trademark applications are filed with the U.S. Patent and Trademark Office (“USPTO”) every single day.
And due to the technological advances of the 21st century, the filing process has never been simpler. Whereas in the past filing a new application was rather cumbersome and involved a lot of paperwork, nowadays you can simply fill out an electronic form provided on the USPTO’s website, pay your fees with a credit card and get an instant filing receipt. It seems that filing a new trademark application has become as easy as shopping online. Or has it?
Despite its apparent simplicity, a trademark application remains a formal legal document, and there are numerous rules, requirements, formalities and technicalities that apply to the application process. Failure to strictly comply with any such rules and requirements may lead to your inability to register a trademark. Even worse, you may find yourself being unable to continue using your trademark and, as a consequence, you may have to rebrand your business, leading to significant losses and expenses.
Here is one recent story that illustrates my point. A well-known chain of cafes owns a federal trademark registration for its brand and discovered that an unrelated restaurant had filed a trademark application for a similar brand. A cease and desist letter immediately followed, forcing the newcomer not only to abandon their trademark application, but to rebrand their new restaurant entirely, including adopting a new name, replacing all promotional brochures, paying for a new advertising campaign, etc. You can imagine the costs of such a rebranding effort. And yet, those costs could have been avoided had the new restaurant’s owners followed the proper procedure for adopting and registering their trademark.
So do not be misled by the deceptive simplicity of filing your trademark application online. To obtain a strong protection for your mark, you should follow the proper procedure instead. So lets talk about the general steps of a trademark’s journey to become your properly registered and protected valuable asset:
1. Trademark Clearance (Availability) Search.
Before you even start using your new trademark and make related investments, you should make sure no one else has rights to the same trademark, unless you are fine with the risk of losing your investment and possibly having to pay damages and legal costs to the senior user of the same mark.
You can conduct a preliminary trademark search directly in the USPTO’s official database (available at www.uspto.gov). But that database merely provides raw data, so a certain degree of skill and expertise is required to search the database effectively and interpret the results. If you don’t feel like sifting through hundreds, if not thousands, of raw records from the USPTO database, you should also feel free to use our artificially intelligent GOYETA search engine (available at www.goyeta.com/trademark_search). GOYETA is free and provides powerful analytics and evaluation of your trademark’s chances or being registered and used without infringing someone else’s rights.
Using an online search engine is a good first step in determining whether you can safely adopt and use your trademark. But if you really want to make sure your new trademark is legally available for your business use, then hiring a trademark attorney is the way to go. Sure, you will pay a few hundred to the attorney to do a comprehensive search and evaluation for you, but that is a very low price to make certain you are building your business on a solid ground.
2. Preparing And Filing Trademark Application With the U.S. Patent and Trademark Office.
Assuming your trademark is legally available to be used and registered in connection with your business, the next step is to file a federal trademark application with the U.S. Patent and Trademark Office.
You don’t technically need an attorney to file your application, and the process can be done online, via TEAS, the Trademark Office’s online filing system. But, as mentioned above, your application is a legal document with multiple complicated requirements. There have been way too many cases where companies were not able to register their trademarks simply because they made mistakes that any qualified trademark attorney can easily spot and avoid.
If you still decide to file your application without using an attorney’s help, you should at least be aware of the following pitfalls that many “pro se” applicants unknowingly fall into:
(a) Trademark Description. Your application must include the drawing of your mark exactly as it is used on your products. The drawing should not include any additional words, images or other matter that is not part of your trademark.
Although the foregoing requirement seems like a straightforward one, way too many applicants include additional unnecessary statements or explanations in their drawings. For example, if the trademark is “XYZ,” some folks may feel the urge to add an explanation, so that their drawing ends up looking something like this:
“My trademark is ‘XYZ’ and I have successfully used it for many years on t-shirts.”
Whatever the reason people have for providing such additional statements to the Trademark Office, applications with such statements are often destined to fail. Why? Because the Trademark Office treats anything you include in your drawing as an integral part of your whole trademark. You better be using your mark exactly as shown in your drawing, or the Trademark Office will refuse to register your mark. So if your trademark includes three letters, “XYZ,” then your drawing must show those three letters only. Period.
If you really need to make additional statements to the Trademark Office, there are separate fields in the application for that purpose. But then again, you should be very careful about any statements you make anywhere in your application form.
(b) Goods. You must think very carefully about what goods to include in your application. If you describe your goods incorrectly or too narrowly, you may be in trouble, since you will not be able to broaden or expand your list of goods in the future.
To help applicants prepare their descriptions of goods, the Trademark Office created a manual. You can access the manual via this link: http://tess2.uspto.gov/netahtml/tidm.html. That is a very useful free public resource. Very easy to use too. You should carefully review the manual to get an idea as to which descriptions of goods are acceptable to the Trademark Office.
(c) Applicant/Owner. The question as to who exactly owns your trademark may look like a simple one, but often times it is not. The owner must be the person or entity that is actually using the trademark, and not a sister company, investor, director or someone else. Unfortunately, I keep seeing applications where a person would list himself as the owner, while the trademark is actually owned and used by the person’s employer. Such applications are always doomed. Even if you are the founder and CEO of your company, you should never list yourself personally as the owner of your company’s trademark.
(d) Dates of Use in Commerce. In your application, you must indicate the dates you first started using your mark in commerce (i) anywhere and (ii) in U.S. Commerce. I have seen many applications that got into trouble because their owners did not understand this requirement or failed to take it seriously.
Way too often applicants provide incorrect dates or dates they think are “close enough,” hoping that the Trademark Office will not bother verifying the information. But if you decide to follow that route, you should remember the following. Even if you get lucky and the Trademark Office accepts your application without verifying your dates of use, this issue is very likely to surface once you try to enforce your trademark against a third party. Do you want to know what will happen once you send your threats out, and the opposing company hires a good trademark attorney? Let me tell you.
The very first thing an experienced trademark attorney will likely do after receiving your threats is obtain your entire trademark record from the Trademark Office. Every claim and statement you made in your trademark application will be examined and investigated. And any incorrect or misleading statements made in your application will be uncovered and used against you. In certain cases, such misleading statements will make your trademark subject to cancellation.
What must also be remembered is that all statements in a trademark application are made under penalty of perjury. So if you make any intentionally misleading statements in your trademark application, there is always a possibility of perjury charges.
So please always double-check all information you provide to the Trademark Office, to make sure everything is absolutely accurate. And once you have confirmed that all your information is accurate, you should verify it one more time, just for good measure.
(e) Specimen of Use. With your trademark application, you should provide a specimen, which is a real-life example of how you are using your mark in commerce. Proper specimens include photographs of actual products, ordering catalogs, etc.
A pretty common mistake that applicants make at this stage is providing mockups or computer-generated images that were created for showing to employees, investors, etc. Such mockups and CGI are not proper specimens and will get rejected by the Trademark Office. A specimen showing you shipped you product to your grandmother will not be acceptable either.
Remember, your specimen must be something from real life, showing your trademark on an actual product, as sold to real consumers.
3. Trademark Examination.
Once filed with the U.S. Patent and Trademark Office, your application will be thoroughly reviewed by an examiner (a specially trained attorney employed by the Trademark Office). Very often, the examiner will raise questions or require additional clarifications and information about a trademark. Sometimes, the examiner will refuse to register a trademark for any of the multiple possible reasons, such as “descriptiveness,” “likelihood of confusion,” and others.
Unfortunately, many applicants agree with the examiner’s demands way too fast at this stage, often voluntarily limiting their scope of trademark protection. What you should know is that even when the examiner refused to register your trademark, the decision is not final. You can present your arguments and evidence. If you are persuasive enough, the Trademark Office may withdraw its refusals or other demands. So do not give anything away voluntarily; fight to obtain the broadest protection possible.
4. Publication for Opposition.
Assuming you pass the examination stage, your trademark will be published in the government’s Official Gazette. At that point, any person in the world will have a chance to oppose registration of your trademark.
If someone files an opposition against your trademark, you will find yourself in the middle of a legal fight, which is very similar to civil litigation, with legal briefs, discovery, etc. Fortunately, though, oppositions do not happen very often. So if you followed all the proper steps in adopting your trademark, the remote possibility of getting opposed is not something that should keep you up at night.
If no oppositions are filed against your trademark (or once you have resolved any such oppositions), your trademark will be approved for registration.
5. Statement of Use.
Your trademark must be used in the U.S. commerce before it can be registered. If you did not use your trademark at the time you filed your application, then you will have to file a “Statement of Use” before your mark can be registered. There are certain legal rules that apply to the “Statement of Use” requirement, but that is a separate big subject.
If all of the above requirements have been satisfied, your mark will be registered.