The Trademark Application Process in (mostly) Simple English

07.29.15

Many businesses think about obtaining a federal trademark registration, but they aren’t sure what is involved. The United States Patent and Trademark Office (“USPTO”) has gotten better at speaking in English rather than legal-ese and has included timelines and explanations as to what is involved. However, it seems that you still need a translator to help figure out what is happening. Therefore, below we briefly take you through what to expect with a trademark application for a mark that you are using.

The USPTO breaks the world up into forty-five classes of goods and services. This matters because the USPTO charges a filing fee for each class of goods or services per mark. If one can use language pre-approved by the USPTO, the filing fee is a lower cost than if there is no pre-approved language that fits the needs. These USPTO filing fees are due upon filing the application. 

Sometimes the fit of the goods and services into classes makes sense; sometimes it makes one wonder. For example, filled ink cartridges for printers are in Class 2 with other inks and paints. However, unfilled ink cartridges are in Class 9 with computer printers and other equipment. Oddly, fountain pen ink cartridges are in Class 16 with paper, typewriters and paint brushes. That means that at times, things that seem to go together in real life get splintered into many classes and others get lumped together in odd pairings. For example, that Class 16 includes paper, stationery, typewrites, paint brushes and fountain pen ink. An artist’s dream! However, it makes someone trying to sell ink cartridges have to decide if registering their mark in three classes makes sense or if perhaps the fountain ink cartridges aren’t worth claiming. 

The application includes the applicant’s name, type of entity (e.g. LLC, corporation, partnership), and address; the mark; whether that mark is a word mark, logo, sound, smell, color or something else; a description of the goods or services connected to the mark; and an example of the mark actually being used by the applicant trying to reach its customers called a specimen of use. This specimen of use is showing the mark connected to the goods or services. This might be a label attached to beer, a delivery van for cupcake delivery services, or a website describing IT help desk services being sold and how to get a hold of the company to get those services. It is whatever a customer would see and recognize that those goods or services are being sold under that mark. That way when the customer sees that mark again, they connect the happy (or maybe bad) feelings they had for the last experience with the goods again. Hopefully, the customer loved what they purchased, and they use the mark to help them buy the same things again. Whatever helps the customer do that is often, but not always, a good specimen of use. 

Once the application is submitted, a trademark examiner is assigned. The examiner looks to see if the application is correct and that there are no other marks being used by third parties that customers are likely to confuse with the mark in the application. If the examiner finds a problem, she issues the objections in something called an office action. The applicant then can choose to respond to the office action or abandon the application, depending on the problem asserted. If there is no office action or the applicant defeats it, the mark is published for thirty days so that third parties can then object to the registration of the mark. This is called an opposition. If there is an opposition, the applicant can either choose to fight the opposition or abandon the application. If there is no opposition or the applicant defeats the opposition, the mark registers. A proper registration continues as long as the mark is in use and the registration is maintained, which means filing another specimen of use and associated filing fee on the five year anniversary and ten year anniversary and then every ten years after that. N

Et voila: The trademark application process! 

• Trademark