What is a Trademark and what is the Trademark filing process?

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A Trademark is something that exclusively represents a business and helps differentiate it from other similar businesses. According to the United States Patent and Trademark Office, your Trademark can be any word, phrase, symbol, design, or a combination of these things that identifies an organization’s goods or services.

The word “trademark” can refer to both trademarks or service marks. Goods can be trademarked, services, on the other hand, are service marked.

The main purpose of a trademark is to distinguish an organization’s products or services from products and services created or offered by other organizations or sources. A trademark is also used to identify the owner or source of a particular product or service in the market.

The use of a trademark is important because it prevents other companies from using your products or services without permission. Trademark laws help protect your brand and avoid any confusion of your product with an existing one.

How to file a trademark

According to the International Trademark Association over 85% trademark applications are filed electronically which is the best and most efficient way to do so. Trademarks can be filed electronically via this link at the United States Patent and Trademark Office (USPTO) website.

Points to keep in mind before filing a Trademark:

1. Determine if your trademark meets the qualification to be a registered trademark. If it is unique to the business and distinguishes your services or products from others. The proposed trademark must not be too generic(for example, CAR to sell motor vehicles) as such generic names are not eligible for trademark protection. You may want to consider avoiding overly descriptive trademark names, which simply describe a quality, feature, purpose or function of your product. For example, "SMOOTH” for ice cream, or "STATIONERY" for pens are descriptive terms that may not be eligible as they too are generic terms which may be common to other products or services..

2. It is also important that you conduct an initial trademark search. When submitting the form to the USPTO, the organization will conduct an initial search to determine similarities between the requested trademark and existing trademarks; and will reject any trademarks too similar to an already established one. This is why the registration application process should not start until a search of the USPTO's trademark registry has been completed.

3. An USPTO account must be created in order to fill out the application form. Once registration is complete, you can access the application materials that can be accessed easily to get the application process started.

4. Choose a filing option from TEAS Plus and TEAS Standard. The TEAS Plus filing option has more requirements upfront when you submit your initial application. As a result, you pay a lower fee per class of goods/services. The TEAS Standard filing option has fewer requirements upfront. However, you must eventually meet all the application requirements and pay a higher fee per class of goods/services. After this, you can complete your application.

5. Once the application is completed, you can pay the fees which are based on the number of classes of goods or services in your application. The USPTO maintains a schedule of fees. You will receive an email with a serial number that will be used to track your application status.

6. A USPTO officer will be assigned to your application. The officer may reach out to you to ask for additional information about your application. The process of receiving a trademark can take 5-7 months from the time of the initial application review.

7. If you have successfully answered all the questions raised in the application process and provided all necessary information, the USPTO will publish the mark for opposition in its Trademark Official Gazette (TMOG) for 30 days. During this period, if someone believes their business will be harmed by your trademark registration may file an objection or opposition. If no opposition is filed to your application, three months after your trademark is published in the TMOG, the USPTO will issue a registration.

8. Post the publication period, the USPTO will issue a Notice of Allowance (NOA). The NOA states that your mark will be approved for registration once you submit a specimen showing the mark in use for the goods or services in your application. This is called the Statement of Use (SOU). If you fail to use the mark when you get the SOU, you can ask for a six month extension to show use. A total of five extension requests can be filed. Additionally, there is a fee for filing an SOU, depending on the number of classes in the application. Once you file an acceptable SOU, the USPTO will issue a registration certificate, generally within 2-3 months.

9. Once your trademark is registered, you may want to allow others to use it for a royalty fee. The best way to set up that type of arrangement is to make a Trademark License Agreement as described at this web page.