The United States Patent and Trademark Office (USPTO) website is incredibly helpful in educating people about the trademark process. However, there are some pitfalls not covered by the site that I’ve encountered in helping my clients. And because I’m all about warning my clients about pitfalls, I am writing this article.
First, you don’t necessarily need to file a formal application for a trademark. Simply by using the mark in commerce, whether it be a name, a logo design, or both, you get some degree of protection as long as you can prove you were using it first. You can even use the little “TM” or “SM” next to your logo without having filed a formal registration with the USPTO. Getting an official trademark from the USPTO allows you to use the ® and grants the registrant the exclusive right to use the mark nationwide in connection with the category listed. Speaking of categories…
When you file a trademark application, you don’t just file for the mark (the name, design, or both) and expect to be the only person on earth who is allowed to use that mark. You must choose a category of goods or services with which your mark will be associated. You can choose multiple categories, but doing so will run up your filing fees. Keep in mind you can’t just pick a category to keep someone else out of it. Before your trademark gets awarded, you have to show the USPTO that you’re actually using that mark in commerce in the category you listed. So if you want to use your mark to sell cosmetics, and you list cosmetics as the category, before the USPTO will grant your trademark, you’ll have to provide something like a photo of the mark on a bottle of makeup. It’s just their way of making sure you aren’t registering a bunch of categories with no intention of ever doing business in those categories. The trick here is you have to provide evidence that the mark is being used in connection with the goods or services listed. A business card with the name or logo does not suffice. Price tags with the logo or name, brochures, and website pages are usually permitted.
When you file the initial application, you indicate whether you are already using the mark in commerce or whether you intend to use it eventually. Some clients want to protect their mark before putting it out in the marketplace. This is okay, as long as you keep an eye on the deadlines and file your Statement of Use (the proof that you’re actually using it) before time runs out. You can also file extensions to keep the clock ticking while you develop the product or service.
So how do you know whether your trademark will be issued? The short answer? You don’t. The USPTO will not grant a trademark that is “confusingly similar” to one that’s already registered. Which means what…?
You can do an initial search on the USPTO website to see if anyone else has registered or applied to register the same or similar mark you want to use for the same or similar category. If you don’t see anything similar, then you can file the application. The USPTO will review the application and compare it with mark already registered and those whose applications are also pending. If they decide that there is a risk of confusion between your mark and one that’s already registered, or one that claims it was using the mark first, the USPTO will issue an “Office Action” which is basically a refusal to register. In an Office Action, the examining attorney will explain why the mark was refused. If you choose to respond to the Office Action (within the deadline), you can present arguments why your mark should be registered. It’s basically like filing an appeal.
This whole process can take quite a while. One of the fastest trademark registrations I’ve had, which included one Office Action, took close to a year. The good thing is the trademark, once granted, is effective as of the date you filed the application.