Trademark Filing

Trademark filing is a multi-step process that is typically intended to result the securing of federal trademark rights, but which can also result in trademark rights in multiple jurisdictions around the world. The process begins with the trademark search and trademark clearance process, namely because trademark filings require both time and money, and there is no guarantee that the filing of a trademark application will necessarily result in the award of a trademark registration. 15 U.S.C. § 1052 lays out the reasons for which a trademark registration can be denied, and a denial on one of those bases is more likely to occur if the filer has failed to conduct the necessary due diligence at the outset of the trademark filing process.

After the necessary due diligence has been conducted in the form of trademark search and clearance, the trademark application process can begin. The USPTO website provides an online filing process that is by far the most cost-effective and efficient mechanism for submitting a trademark application. The filer of the mark does not necessarily have to be an attorney—for example, any putative trademark owner can file his or her own trademark application. That said, it is important to note that any non-employee, third party that is filing an application on the putative owner’s behalf should be an attorney. Once a filer has been selected, that person must go through the online application and fill in the pertinent information. Such information will include whether the filer intends to file on the principal or supplemental register, what entity is seeking the registration (person, corporation, etc.), and other identification and correspondence information. The filer will also have to choose the type of mark for which registration is sought, i.e. a word mark, design mark, etc.

Next, the filer will need to select the class or classes in which the registration is sought. It should be noted that a registration can only be obtained for a trademark currently being used in commerce, unless an intent-to-use (ITU) application is filed. An ITU application gives the filer six months to submit a Section 15 Affidavit of Use; in other words, the filer may file for a mark not yet in use for up to six months prior to the first date of use in commerce. If choosing the ITU option, one should select the class or classes for the registration while keeping in mind that an affidavit will need to be filed in six months illustrating that the mark is being used in each of the classes for which registration is sought. If the mark is already being used in commerce, a specimen showing the mark’s use in commerce can be uploaded to be included with the application.

After following the prompts and inputting credit card information for payment, the application process will be complete. That said, trademark registrations are not guaranteed, and it is possible that the USPTO trademark examiner will contact the designated representative to inform them of a denial of the registration as well as the grounds for the denial. If the denial is based on substantive law, it is prudent to contact a trademark attorney that can respond accordingly to the office action and amend the application so that a registration may be successfully issued.