The Trademark Application Process

I know it has been a while. Things have been a little hectic here at Hurchalla Law, and as such I have neglected my blog. Well, I’m back! And recently, I’ve had A LOT of inquiries about trademarks. So I’d like to veer a little bit away from patents for now, and dip our toes into the world of trademarks.

I don’t want to talk about what a trademark is – I’ve discussed that here. Instead, I want to tell you a little bit about the trademark process and what to expect along the way.

Compared to obtaining a patent, the trademark process is usually easier. Once you’ve decided on your mark, thorough research is done by your attorney to determine if the mark is already in use. If your mark is not in use by someone else, or is determined to not be substantially similar to a mark already in use, an application can begin.

There are two different types of trademark applications, one for marks already being used and one for marks that wish to be used, but have not yet been used (this is called an intent-to-use application). The intent-to-use application is much more involved, lengthy and expensive. This is to prevent people from snatching up catchy names and sitting on them to eventually sell them to someone who wants to actually use it for their business. An intent-to-use application is considered pending until the mark is actually used in commerce and then is converted to an in-use application before it can actually proceed with the registration process. Additionally, an intent-to-use application must be renewed every six months, along with a fee and a statement as to why the mark has not yet been used in commerce. Even after filing your fee and statement, the USPTO may deem that your excuse for not using the mark is unacceptable and refuse to keep your application alive.

So, what does use in commerce actually mean? To the USPTO, this means you are using the mark to advertise/market/identify your goods or services across state lines. This can include product packaging and labeling, brochures, and websites (just to name a few). As part of the application process, for a mark already in use, the USPTO requires that you submit a specimen. A specimen is an example of your mark being used in commerce.

Once your application is submitted, it typically sits in the USPTO office three to four months before being examined. Like a patent, the trademark examiner may reject your application for many reasons – the most common including: it is deemed offensive, deceptive, disparaging or false, OR because the mark is likely to be confused with a mark already registered. If your application is rejected for one of these reasons, your attorney will be given an opportunity to argue why the mark should continue to registration.

If there is no objection from the trademark examiner, however, your mark will move to publication. The mark will publish in the Official Gazette, where people will have a 30-day window in which to object to the mark registering. If no objection is made within that window, the mark will continue to registration – which typically takes 6 to 8 weeks after the publication window has closed. Overall the average time from the submission of your trademark application to your trademark registration is about 6 months to a year.

Did you know? You can obtain a state trademark if your service or goods have not yet crossed state lines!

Do you have a mark for your business, services, or goods that you think needs protection? Call me today to find out and get started with the application process! Hurchalla Law offers flat fees on all trademark applications and stages in trademark prosecution. Until next time, be kind and promote progress!