Registering a trademark is a simple process often complicated by small mistakes and errors. At Pearson Butler, our Utah lawyers have helped clients through the filing process many times. In this guide, we’ll walk you through the basics of filing a trademark with the United States Patent and Trademark Office (USPTO).
Step 1: Choose Your Brand Name and Do a Trademark Search
The first step will be to think of an available brand name. Coming up with a brand name that you can trademark (and that doesn’t violate someone else’s registered trademark) can be hard to do. After what’s likely to be a lengthy brainstorming session, you may find that your first choice is already taken. Even if you settle on a name that doesn’t seem to be taken, do a trademark search to ensure that it’s available.
A trademark attorney can help by doing a trademark search as detailed as the one done by the USPTO’s examining attorneys. These professional searches are far more thorough than a regular search done on the internet. Although optional, working with an attorney can save you a lot of time and effort.
Step 2: Fill Out and File a Trademark Application
At this point, you will need to fill out and file your application with the USPTO. Make sure to carefully fill out every part of the application that applies to you. Any mistakes or misleading information could result in the application being delayed or denied. Note that examining attorneys at the USPTO are very thorough when processing applications—if there is a mistake, they are very likely to catch it.
Whether or not you had an attorney do a trademark search for you, it is a good idea to have an attorney help you with your application. This can save you time in the long run, as you can reduce your chances of having to amend your application or file an appeal.
Step 3: Monitor the Status of Your Trademark Application
Once you file your trademark application, it could take about 12 to 18 months to be approved. During this time, the USPTO recommends checking your application status at least every six months. More is better, however.
If your application is approved, the examining attorney at the USPTO will publish the trademark in the USPTO’s weekly publication, the Official Gazette. You should receive notice of the approval and publication. If no one objects to the trademark within 30 days, you will move on to the next phase.
Although other parties only have 30 days to object, most applicants must wait somewhere between three and four months to be informed that their trademark is moving forward. Don’t panic if you don’t receive your certificate of registration as soon as those 30 days are up.
Step 4: File a Statement of Use
Once your trademark application has been approved, you will need to file a statement of use (SOU) within six months of the date on your certificate of registration. There is also the option to file for an extension. If you don’t follow through on this part of the process, your application will be considered abandoned.
The SOU is essentially a way to let the USPTO know that you have used the trademark in commerce. If your SOU is approved, the trademark is officially yours! You should get your registration in about two months.
Step 5: Maintain Your Registered Trademark
The final step is to keep your registration live. This often includes filing maintenance documents to let the USPTO know that your trademark is still being used. If you neglect this, your registered trademark may expire. In some cases, it may be canceled.
Visit the USPTO online for more information on the entire filing process.
For the help of a skilled trademark lawyer, give our Utah full-service law firm a call at (800) 265-2314. Your initial consultation is provided free of charge!