Business owners in Chicago, Illinois frequently inquire about the steps involved in registering a trademark, including searching, application preparation, United States Patent & Trademark Office (USPTO) examination, publication, and potential opposition proceedings. The federal trademark registration process with the USPTO involves several steps:
Preliminary Search:
Conduct a comprehensive trademark search to identify any existing registered trademarks or pending applications that may be confusingly similar to your desired trademark. This can help determine the likelihood of successful registration and avoid potential legal disputes.
Choose a Filing Basis: Determine whether you are filing your application based on actual use in commerce (if you are already using the mark) or
intent to use (if you plan to use the mark in the future).
Prepare the Trademark Application: Complete the trademark application, providing necessary information such as the trademark owner’s details, a clear representation of the mark, the goods or services associated with the trademark, and the appropriate filing basis. Include a specimen of use if filing based on actual use.
Submit the Trademark Application and Pay Fees: File the trademark application with the USPTO and pay the required filing fees.
USPTO Examination: A USPTO examining attorney will review your application to ensure it meets all legal requirements and that there are no conflicting marks. The
examining attorney may issue an Office Action if there are objections or issues with the application, which you must address within a specified time.
Publication for Opposition: If your trademark application passes examination, the USPTO will publish your mark in the Trademark Official Gazette (TOG), a weekly publication. This allows third parties a 30-day window to
oppose the trademark registration if they believe it would harm their rights.
Opposition Proceedings (if applicable): If a third party files a trademark opposition, the Trademark Trial and Appeal Board (TTAB) will oversee the opposition proceedings, which can be similar to a legal trial. Both parties present arguments and evidence, and the TTAB makes a decision on whether to allow or deny the registration.
Registration or Notice of Allowance: If no opposition is filed or the opposition is unsuccessful, the USPTO will issue a registration certificate for trademarks based on actual use or a Notice of Allowance for intent-to-use applications. In the latter case, you must file a Statement of Use within six months (with possible extensions) to demonstrate actual use of the trademark and obtain the registration.
Maintenance and Renewal: After registration, you must
maintain your trademark by filing specific maintenance documents and paying associated fees at regular intervals (between the 5th and 6th year, between the 9th and 10th year, and every 10 years thereafter).
The federal trademark registration process can be complex, and it is advisable to consult with one of our trademark attorney to help navigate the process and ensure the best possible outcome. Note, the current federal trademark registration process will generally take between 10-14 months to complete.
