Filing a Trademark Registration Application
The best protection available for a trade mark or service mark requires the owner of a business to register the trade mark or service mark with the United States Patent and Trademark Office (PTO). The owner of a federally registered trademark or service mark is entitled to exclusive use nationwide. An approved trade mark or service mark registration is conclusive evidence of the ownership and trademark ability of a trade mark or service mark.
Applications to register a trademark or service mark are filed with the United States PTO. The application is reviewed and, once approved, is published by the PTO in its monthly gazette.
An important part of a trademark registration application is the description of goods or services with which a trademark or service mark is or will be used in commerce. Goods and services are classified in 45 international classes. A trademark or service mark will receive federal or international protection only in those classes for which it was registered.
Examination of a Trademark Registration
After an application for federal trademark registration is filed with the Patent and Trademark Office, a trademark examiner will examine the application and perform a search to determine whether the applied-for trademark would likely cause confusion with previously used trademarks.
First, the PTO examiner will evaluate similarities between the trademarks in appearance, sound, connotation and commercial impression. Second, the examiner will compare the goods or services to determine if they are related or if associated marketing activities would cause confusion as to origin of the goods or services.
If the examiner, in his or her opinion, finds a likelihood of confusion between the trademarks or other deficiencies, the examiner will issue an office action refusing the registration. The applicant will have 6 months to respond to the office action.
Publication of Trademark Application
Once the examiner accepts the trademark or service mark application, the application will be published for opposition in Official Trademark Gazette. If no opposition is received from third parties, the trademark will be either registered or, if the application was filed under the intent-to-use basis, the applicant will need to submit a proof of use within 6 months of the issuance of a notice of allowance.
Term of Trademark Registration
The federal registration of a trademark or service mark is issued for a period of 10 years from the date of registration with an option to renew between 9th and 10th years. To take an advantage of the 10-year registration term, the owner of the trademark or service mark must file a Declaration of Use between 5th and 6th years from the date of registration.
If a trademark was continuously used in commerce for at least 5 years, a trademark owner can file a Declaration of Incontestability that would provide conclusive evidence of the validity of the registered trademark, including its ownership and exclusive right to use the trademark with associated goods or services.