Registering a federal trademark with the United States Patent and Trademark Office (USPTO) is an important consideration for any Jacksonville business seeking to protect its intellectual property rights. The federal trademark registration process involves several stages, which are outlined below:
Conduct a Comprehensive Trademark Search: Before filing a trademark application, it is crucial to perform a
comprehensive trademark search to ensure that the proposed trademark is not already in use or registered by another party for related goods or services. This trademark search, which involves searching all state, US territories, federal trademark databases, and common law sources (in certain situations), can be performed by our trademark attorneys and completed within three (3) business days. Our trademark law firm uses
Corsearch, the premier trademark search, trademark clearance and protection platform for trademark and brand solutions.
Determine the Appropriate Trademark Classification: The USPTO uses the International Classification of Goods and Services to organize trademarks according to the goods or services they represent. As part of the comprehensive search discussed above, our trademark attorneys will determine the appropriate class(es) under which your goods or services fall, as this will be required when filing your trademark application with the USPTO.
Prepare The USPTO Trademark Application. To file a USPTO trademark application, our attorneys will need to provide the following information: (1) the name and contact information of the trademark applicant (or owner of the trademark); (2) a clear representation of the trademark (e.g., a photo, PDF, text, or other materials depicting the trademark); (3) selection of the appropriate trademark class(es) of goods or services; (4) a statement of use or intent to use the trademark in commerce, along with the necessary supporting evidence (e.g., specimens showing the trademark’s use on goods or in connection with services).
File the Trademark Application: Our attorneys will file the trademark application electronically using the USPTO’s Trademark Electronic Application System (TEAS). There are different filing options, such as TEAS Plus, TEAS Standard, and TEAS RF, which have varying requirements and fees. Our attorneys will carefully review the requirements for each filing option to choose the one that best suits your needs. The filing fee ranges from $250 to $350 per class of goods or services, depending on the chosen filing option.
USPTO Review: After our trademark attorneys submit your trademark application, a USPTO examining attorney will review it to ensure it meets all legal and procedural requirements. If the examining attorney identifies any issues or requires additional information, they will issue an Office Action outlining the necessary changes or clarifications. Responses to Office Actions must be submitted to the USPTO within three (3) months to avoid the abandonment of the trademark application.
Publication for Opposition: If the examining attorney approves the trademark application, the USPTO will publish the trademark in the Trademark Official Gazette (TOG), a weekly online publication. This publication serves as public notice, allowing third parties a
30-day window to oppose the trademark registration if they believe it would harm their interests. If no opposition is filed or any filed opposition is resolved in the trademark applicant’s favor, the trademark application will proceed to the next stage.
Registration or Notice of Allowance: If our attorneys filed a trademark application based on the actual use of the trademark in commerce, and no opposition is raised, the USPTO will issue a registration certificate. If our attorneys filed a trademark application based on intent to use, the USPTO will issue a Notice of Allowance. The trademark applicant will then have six months to file a Statement of Use, showing evidence of the trademark’s use in commerce. You can request extensions of time if needed.
Maintain and Renew The Trademark Registration: Once the trademark is registered with the USPTO, it is essential to maintain and renew the registration. A Declaration of Use (Section 8) must be filed between the fifth and sixth year after registration, and a combined Declaration of Use and Application for Renewal (Section 9) must be filed between the ninth and tenth year after registration, as well as every ten years thereafter.
The time it takes to perform a comprehensive trademark search and register a trademark with the USPTO can vary depending on several factors. However, a general estimate for each stage is as follows. A comprehensive trademark search will typically take our trademark attorneys three (3) business days to complete. The overall federal trademark registration process, from filing the trademark application to receiving the registration certificate, can take approximately 10-14 months. However, the timeline depends on the complexity of the trademark and the trademark application, whether the trademark application will be required to respond to a USPTO Office Action, and whether any oppositions are filed during the publication stage. Some trademark applications may process more quickly, while others may take longer, especially if there are legal issues or conflicts to resolve.
It is essential to note that these timeframes are only estimates and can vary significantly depending on individual circumstances. While the trademark search stage can be relatively quick, the registration process with the USPTO tends to take longer due to the review, examination, and potential opposition phases. It is crucial to plan accordingly and engage the services of our trademark attorneysl to help navigate the process more efficiently.
