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How To Trademark a Name
Registering your trademark is key to protecting and growing your business. This guide explains how we help our clients with every part of the trademark registration process. We believe that every business is a specialist in their own field, and just like you are an expert in your industry, trademark registration requires expertise in relevant trademark laws and practices. That is one of the reasons why we strongly encourage you to work with a qualified trademark attorney. For detailed reasons why working with a qualified trademark attorney is recommended, please read "Do You Need A Trademark Attorney". Now, let’s get to the initial steps to apply for a registration of your trademark.
1. Understanding Your Trademark
First, we will share our trademark form with you to fill out. This helps us learn about your trademark, the goods and services you offer, and other relevant aspects of your business so we can give you personalized advice and recommendations.
Selecting a Mark
Not all marks can be registered with the trademark office, and some may not even provide a legal basis to prevent others from using a similar mark on related goods or services. Many first-time brand owners select marks that are challenging or even impossible to register or protect. Before filing your application, we will help:
- Assess if the mark is registrable.
- Evaluate the potential challenges in protecting the mark based on its distinctiveness.
Identifying Goods and Services
Goods are products your customers purchase from you, such as shirts or shower gels. Services are activities performed to benefit someone other than you or your company, such as repairing clothing or website design.
There are 45 classes as determined by international agreement. We will help you select and specify the class or classes that best fit the goods or services your trademark will cover and clearly define the specific goods or services you want to register with your mark.
Searching (not mandatory, but recommended)
We will help you conduct a thorough search in the database of the country of registration for any similar trademarks to ensure that there are no existing trademarks that could conflict with your mark on the same or similar goods or services.
Filing Basis (particularly relevant for the US Trademarks)
The "filing basis" refers to the legal grounds under which an applicant files a trademark application with the United States Patent and Trademark Office (USPTO). There are generally four primary filing bases.
- Use in commerce basis – you currently use your mark in the US commerce with your goods and/or services.
- Intent-to-use basis - you have a bona fide intention to use your mark in the US commerce with your goods and/or services in the near future.
- Foreign registration basis - you own a foreign registration of the same mark for the same goods and/or services from your country of origin.
- Foreign application basis (or foreign priority basis) - you own an earlier-filed foreign application that was filed within six months of your US application for the same mark and the same goods and/or services. This basis is not limited to the US trademarks; you may use this basis in any member country of the Paris Convention within 6 months of the date of your first application.
We will help you identify and select the basis for filing the application before proceeding.
2. Prepare and Submit Your Application
Trademark application
Once we understand your business, we will prepare and file your trademark application with the relevant trademark office.
Monitoring application status
Throughout the entire process, we will diligently monitor the progress of your application. We routinely check the status of your application every three to four months following the initial filing to ensure that we adhere to all filing deadlines and keep your application on track.
3. Work with the Trademark Office
The designated Examining Registrar reviews the application
When the trademark office receives the application and it meets the minimum filing requirements, they will assign an application number and forward the application to an examining registrar. This process may take several months. The examining registrar will review the application to ensure that it meets relevant rules and laws and includes all necessary fees. Filing fees are non-refundable, even if the application is later rejected for legal reasons. A thorough review involves searching for conflicting marks and examining the distinctiveness of the mark, all information, and documents submitted.
Trademark Office issues letter (office action)
The Trademark Office will send you a letter, also known as an Office Action, if they decide that a mark should not be registered. This letter will explain any legal reasons for the refusal.
Applicant timely responds to letter
There is an official deadline to respond to the above-mentioned Office Action. Failure to respond by the deadline will result in abandoning your application. If you disagree with the examining registrar’s refusal, you may, for an additional fee, appeal such refusal to the Trademark Board.
4. Success! Get Your Certificate of Registration
Trademark Office publishes your mark
If the examining registrar raises no objections to registration, or if you overcome all objections as explained above in the previous step, the examining registrar will approve the mark for publication in the "Trademark Official Gazette" of the relevant trademark office. The trademark office will send us a notice of publication stating the date of publication. After the mark is published in the "Trademark Official Gazette," any party who believes it may be damaged by registration of the mark has a certain number of days (depending on the country) from the publication date to file either an opposition to registration or a request to extend the time to oppose. The trademark office will notify the applicant of the opposition.
Registration certificate issues
Suppose no party files an opposition or request to extend the time to oppose. In that case, the trademark office will register the mark and request the applicant to pay the government registration fee to officially register the mark and send the applicant a certificate of registration.
Timely payment of the government registration fee, if required before the issuance of the certificate of registration, is of utmost importance. It must be paid by the official deadline. Failure to respond by the deadline will result in abandoning your application.
For the US application filed based on bona fide intention to use the mark in commerce, a timely statement of use or a request of extension of time must be made and accepted before the USPTO officially registers the mark.
5. Maintain And Enforce Your Rights
Filing Renewal and Maintenance document
The initial protection term is 10 years. To keep the registration “live,” “valid,” or “registered,” the registrant must renew the mark before every expiry date. In some countries, a statement/affidavit/declaration of use (SOU or AOU or DOU) and the evidence of use of your mark with the trademark office are required. Failure to file the renewal and/or such use form and evidence will result in cancellation of the registration.
Protecting your rights
Once your trademark is officially registered, it is your responsibility to enforce your rights because the trademark office does not "police" the use of marks. Although every trademark office does not allow another party obtaining a registration for an identical or similar mark for related goods/services, the owner of a registered mark is responsible for taking legal action to stop any party from using an infringing mark or trying to register a too similar mark.
