Filing a trademark with USPTO is a process where an individual files a trademark application with a patent and trademark office such as the United States Patent and Trademark Office (USPTO). Filing a trademark with USPTO does not necessarily mean that the mark can be registered. A USPTO trademark examiner conducts searches from his/her point of view and the mark is undergoes publication on the USPTO Portal for the opposition. If there is no opposition, only then the mark receives registeration. In this article, we will cover the complete process of registering a trademark with the USPTO.
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Who Can File a Trademark Application?
The US LAW governs the trademark application process. The following people can file a trademark application with the USPTO:
- If a person is a foreign-domiciled applicant, he/she must have a US-licensed attorney to represent their mark application at the USPTO.
- If an applicant has a domicile in the US, it is not essential for him/her is to have a US-licensed attorney to represent their mark application. However, the USPTO strongly encourages hiring an attorney who specializes in trademark law to guide a person through the application process.
- Foreign attorneys and non-attorneys cannot provide legal advice, help fill out a form, sign documents or act on the mark application.
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Steps Involved in Registration of a Trademark
The registration of a trademark involves the following steps:
Pre-filing Process
In this step, searches are conducted on the USPTO portal to determine whether the mark is registerable or not. Essentially, the process determines the desired mark (word mark or stylized mark or sound mark), filing basis, and classification of goods & services. It can also determine whether the mark has any conflicting marks or not. If there is any conflicting mark, then the desired mark cannot be registered.
Filing and Submission
This step shows how one can file a trademark on the USPTO portal using filing details. The key elements for filing a trademark with USPTO are:
- Ownership information
- Mark format (word mark or stylized mark or sound mark)
- Classification of goods & services
- Filing basis
- Attorney or correspondence information (in case an attorney is filing on the client’s behalf)
- Declaration and Signature
After the filing a trademark with USPTO, the applicant or an attorney representing the applicant signs the application and submits on the USPTO portal thereafter. The filing fees for submitting a Trademark Electronic Application System (TEAS) plus the application is $250 (earlier it was $225) and TEAS standard application is $350 (earlier it was $275). Once the applicant pays the fee, he gets an application number for the file that helps the trademark filer keep a track of his/her application status.
Post-filing Process
Once an applicant receives an application number, the USPTO assigns the application to a trademark examiner who then determines whether all the requirements have been met or not. However, he/she may issue an Office Action (OA), if the application does not clear the requirements. The applicant must respond to the OA within the stipulated time. This step includes the issuance of an OA, filing a Statement of Use (SOU), removal or addition of an attorney, change of address or correspondence information, change in classification of goods & services, change in ownership information, issuance of a notice of publication and issuance of a notice of allowance.
Registration
In this step, an applicant receives a Certificate of Registration by the USPTO upon meeting all the requirements. After registration, the applicant receives the entitlement to use the symbol ® for trademark. This registration helps an applicant to protect his/her trademark from any infringing mark.
Also Read: US Trademark Search: How to do Trademark Search Easily?
Types of Applications
In TEAS, the USPTO has one initial application form with two filing options: TEAS Plus and TEAS Standard.
TEAS Plus
In TEAS Plus filing fees are $250 per class of goods & services (earlier it was $225). Here, a person must select his/her goods or services listing from the Trademark Identification (ID) Manual. A US-licensed attorney must complete and submit the initial application.
TEAS Standard
In TEAS Standard, filling fees is $350 per class of goods & services (earlier it was $275). Here, a person can write the description of his/her goods and services. It is essential to accurately describe their goods and services. In the case of US domiciles, the applicants can complete and submit the initial application. However, a US-licensed attorney must receive designation thereafter. For foreign applicants, a US-licensed attorney must complete and submit the initial application.
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Basis of Filing a Trademark with USPTO
It is the basis in the Trademark Act upon which a person has filed his/her trademark or service mark application with the USPTO. An applicant must include one or more filing bases in an application. Each filing basis has different requirements that he must consider before a trademark or service mark proceeds towards registration. For a mark application, a person may select from the following four bases.
Use in Commerce basis (under Trademark Act Section 1(a))
A person is currently using his/her mark in commerce with his/her goods and/or services. On this basis, he will submit a proof of use (POU) along with the Date of First Use (DOFU). If the person does not receive any objections after a notice of publication, he receives a Certificate of Registration.
Intent-to-use basis (under Section 1(b))
A person has a bonafide intention to use his/her mark in commerce with the goods and/or services soon. Here, after a notice of publication, the applicant receives a notice of allowance where the applicant submits a Statement of Use (SOU) for his/her application. If the applicant does not submit the SOU within the limitation period, then his/her mark receives abandonment.
Foreign registration basis (under Section 44(e))
A person owns a foreign registration of the mark that he/she is now registering with the USPTO for the same goods and/or services from his/her country of origin.
Foreign application basis (under Section 44(d))
A person owns a previously filed foreign application. This foreign application must be filed within six months of his/her US application for the same mark that he/she is now registering with the USPTO. This basis is “foreign priority basis” because an applicant requests a “priority” filing date for the US application that is the same date as that of the foreign application filing date.
Related Article: Key Parameters to Perform USA Trademark Search
Conclusion
To obtain trademark protection, companies must register their trademarks with the appropriate patent and trademark offices (PTOs). Trademark registration not only informs people of the owner of the trademark but also gives the owner an exclusive right to use his/her mark within the jurisdiction of registration. TMReady’s Trademark Search and Monitoring service offers its clients the insights they require before filing a trademark with USPTO and keep an eye out for mark infringement. Click here to get more details on our service.
– Inderpal Singh Chowdhari (Sr. Trademark Analyst) and the Editorial Team