What is the Process for Registering a Trademark?

The first phase of the process is the search.  The search is one of the most important parts of the process.  A search enables a person to know ahead of time if someone has already registered his mark or if his mark is too similar to someone else’s.  It is important to do a search early and in advance, so that one will not have to go to court in the future because he has been using someone else’s trademark and did not realize it.

Searches need to be as thorough as possible.  There are various databases that need to be searched.  For instance, databases pertaining to federal trademarks, state trademarks, common law trademarks, domain names, and industry news databases should all be searched.  The search results can then be organized based on how similar they are to the mark that the person is trying to get trademarked.

Although it is possible for one to do a search oneself, a better option would be to hire a lawyer or law firm to do the search to ensure that it is sufficiently thorough.  A search alone could cost around $600.  Based on the search, the attorney could offer advice on what would be the potential risks in going forward with use and registration of the trademark.  All total, a thorough search could cost between $1,000 and $2,000.

There are some potentially less expensive search options, but they are usually less thorough.  For instance, there are private, commercial trademark databases containing both federal and state trademarks and which can be searched for a fee of approximately $150.  The total costs of searching in this manner could still be between $500 and $700.  This form of searching should be done if the attorney that is doing the searching is very familiar with the database query structures and how they function.

The next step of the process, after the search, is filing an application for federal registration of the trademark.  There are various options that are available when one files a trademark application.  Some of the options include determining whether to use a standard character claim or a special form drawing.  Other things to consider are whether to apply in one’s own name or to use another entity.  One may have to determine whether to file an Intent-to-Use or an Actual Use benefit form.  These are some of the questions that a person may have to answer when they fill out a trademark application.  If there are any errors on the application the application will receive a refusal known as an Office Action from the US Patent and Trademark Office.  At this point, if one did not already have an attorney, he would likely need to get one in order to correct the errors.  This is another reason why it would be wise for a person who is interested in applying for a trademark to utilize a trademark attorney from the beginning.

In order to file a single class, meaning a trademark that covers one “type” of good or service, the estimated costs could be between $1,000 and $2,000, which includes the government fee and the time that it would take an attorney to prepare and file the application.  Some law firms offer fixed fee arrangements that would cover the work to file the application for a set cost.

After a trademark application has been filed, there is another important step that must take place, prosecution.  During this phase, an Examining Attorney reviews the application.  The Examining Attorney is likely to object to some part of the application.  For example, the Examining Attorney may make objections if there are potential conflicts between this trademark and other registered trademarks.  Another allegation he could possibly raise is that the trademark is merely descriptive, meaning that it does not truly function as a trademark because it simply describes the goods with which it is associated.  Another objection could be that the description of goods is too broad.  Objections come up very often, and they can be difficult to respond to.  If an Office Action takes place, a person should most certainly employ an attorney to respond to it.

Aside from Office Actions other procedural obstacles could occur.  For example, if someone filed on an Intent-to-Use basis, he would have to prove that he had begun using the trademark.  After the Examining Attorney finishes reviewing the application, it will be approved for a publication period.  During the publication period, third parties can oppose registration of the mark by filing a Notice of Opposition.  The entire process of prosecution could cost upwards of $1,000 to $3,000; these costs are in addition to research costs and filing costs.

There are many steps that have to take place when a person wants to get a trademark registered.  Therefore, the best decision is to hire an attorney for that process.  One also needs to be aware of the potential costs to have research done, a trademark application filed, and then prosecution of that application.

 

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