Updated: June 24, 2022
When you decide to start a new business, one of the first steps is choosing its name, logo and slogan to serve as identifiers that will distinguish it from competitors. These valuable, intangible assets make up your brand identity and it is essential to protect them. Registering things like a brand name, logo or even certain colors as trademarks can help accomplish that goal but must be done with care. Filing a trademark application is not restricted to attorneys – with an online application available to the public, anyone can do it. However, it is a complicated and time-consuming process. Mistakes and errors are easy to make and can lead to weak trademark protection or rejection of your trademark registration altogether. Seeking legal assistance can prevent these costly mistakes.
THE TRADEMARK REGISTRATION PROCESS
Federal trademark registration is not a requirement. However, it is recommended because of the substantial protection it offers owners against unlawful infringement. The process for registering a trademark with the United States Patent and Trademark Office (USPTO) can generally be broken down into six steps:
- Identifying what aspects of your brand you want to trademark.
- Researching your trademark to ensure there are no conflicting trademarks.
- Adjusting your trademark to avoid any conflicts if needed.
- Preparing and submitting the trademark application.
- Responding to any Office Actions by the USPTO.
- Responding to any oppositions to your trademark.
RESEARCHING TRADEMARKS
Before approving a trademark application, the USPTO (the Patent and Trademark Office) will conduct a review to determine whether there is a “likelihood of consumer confusion” with the mark of the applicant and any mark already registered or in a pending application. If there is “conflict,” the trademark will be rejected. For this reason, it is important to research whether your trademark may conflict with another trademark before you submit an application. This research can be done by using Google, the USPTO’s website or paying a company to do the research for you.
However, research is only the beginning. Any similar trademarks must also be analyzed to determine whether they are so similar that the average consumer would probably be confused as to which brand is which. This analysis can be challenging for someone who is not familiar with trademark law. It requires a degree of legal expertise. For example, trademarks can be considered confusingly similar even if they are not identical. Further, two marks may be very similar, but would not be confusing to consumers because the goods/services of the parties are not related so consumers would not think of the products as originating from the same source.
ADJUSTING YOUR TRADEMARK
If your research finds that there is a likelihood of confusion between your mark and an existing or pending trademark, it should be adjusted before submitting your application to avoid rejection by the USPTO. Making small changes to a slogan or logo may be enough. However, it is a balancing act. The trademark must be sufficiently differentiated from other conflicting trademarks but still represent the ideas or values of the business. Without legal guidance, there is a risk that you may end up with a weak trademark with limited protection or a rejected application.
RESPONDING TO OFFICE ACTIONS
Once a trademark application is submitted through the USPTO’s website, a trademark examiner reviews the application. The examiner will either approve the application for publication or issue an “Office Action.”
An “Office Action” is issued when the USPTO has found a problem with the application. An Office Action can come in two forms. The first is a Procedural Office Action (POA). A POA typically involves a fairly simple mistake that can be amended easily, like correcting a street address. The second form is a Substantive Office Action (SOA). A SOA is most commonly issued when the USPTO finds that there is a conflict between an applicant’s trademark and an existing registered trademark.
Responding to a SOA requires more than amending the application. Applicants must make an argument for how or why the application does not conflict with the other trademark identified by the USPTO. Typically, legal research is necessary in order to provide a legally sound response with citations to legal cases and documents. Furthermore, there is limited time to respond (typically six months). Failure to respond on time or make a satisfactory argument for registration will result in denial of the application. In that event, the only recourse is a time-consuming appeals process.
PUBLICATION AND OPPOSITION
If the USPTO accepts the mark, it is publicly published (typically online) along with other pending trademarks. This gives current trademark owners and the public an opportunity to see if any pending trademarks are infringing their trademarks. Other owners have 30 days to oppose pending trademarks from the time they are posted. If a person or business opposes a pending trademark, they can file with the USPTO in opposition to granting the trademark because it allegedly infringes on their existing trademark.
Resolving an opposition is like going to court for a trial. Both sides present arguments and a panel of administrative judges make the final determination as to whether the trademark should be approved.
Parties are not required to be represented by an attorney, but challenging an opposition involves making legal arguments. A non-attorney may find it difficult and time-consuming to present a compelling legal case on their own, and the consequences of failure may be denial of the registration.
CONCLUSION
Trademark law offers significant protection to your brand, which is why it is important to get experienced legal advice on matters involving your company’s intellectual property. The registration process requires an in-depth understanding of trademark law and USPTO procedures. The dangers of filing without an attorney include getting a low-level registration or even failure to receive registration entirely. Contact an experienced attorney for assistance with your trademark needs.
