Once a mark has been selected, a search should be conducted at the Patent and Trademark Office by a qualified searcher. The search determines whether the desired mark or any similar or confusing marks are already registered. Skipping this step of the process ultimately could be costly if such a mark is found after the trademark has been adopted and incorporated into advertising materials.
An application is prepared and filed with the Patent and Trademark Office. In the United States, a trademark application can be filed on the basis of existing or intended use in the U.S. A foreign registration or application can also be used as a basis for registration.
After a period of several months, the application is examined by a Trademark Office Examiner who determines whether the mark meets all of the requirements for registration. If the Examiner objects to the application, an Office Action is issued. This document states the objections and provides an opportunity to argue against the Examiner’s objections to registration.
If the Applicant is successful in overcoming the objections, the application is published for opposition in the Trademark Gazette.
During publication, any interested party may lodge an objection to the registration. The Applicant then has the opportunity to overcome the objections.
If all of these obstacles are overcome and the mark is used in the United States, the mark will be registered in due course.
Affidavit of Continued Use
Five years after registration, the owner must file an Affidavit to indicate that the owner has continued to use the mark in interstate commerce. The registration is granted for a ten year period from the initial date of registration and can be renewed for additional ten year periods indefinitely.
Why register for trademark protection?
Registration of a trademark advises the public of the ownership of a mark and of the origin of the particular goods or services. In the marketplace, product positioning and branding enhance marketing and advertising programs while establishing differential advantages amongst competitors. Registration of trademarks provide for legal remedies should competitors infringe upon the marks.