U.S. Trademark Registration Process- Step-by-Step Overview with Explanation Graphics from a Lawyer


Hello everyone, my name is Bharath Konda. I am a trademark attorney. Today I am going to discuss about the importance of a trademark attorney for trademark registration purposes. In this video, I will cover nine
trademark topics that are relevant to trademark registration. They include, first I will talk about whether you can trademark for free? Whether you will be able to get a
trademark registration without the help of a trademark attorney? A lot of startups have this question. Second, I will discuss about whether you need a trademark
attorney? Third, I will discuss why you need to hire a trademark attorney? Fourth, I will discuss how a trademark attorney helps with the trademark registration process. Fifth, I will discuss what is a trademark office action?
and who issues the trademark office action at USPTO? Sixth, I Will talk about what
are the trademark office action types? Seventh, I will discuss how often a
trademark gets initial refusal? Eight, I will discuss how a
trademark attorney responds to this initial refusal with substantive legal
arguments? Ninth, I will talk about why a foreign trademark applicant needs to
hire a U.S. trademark attorney. Let’s talk about each one of them in detail. This
will help you to understand the importance of trademark attorney. Coming
to the first point, can you trademark for free? Will you be able to get a trademark registration without the the help of a trademark attorney? If you are
planning to apply for a trademark all by yourself then you had to do a lot
of things right before you are granted a trademark by United States Patent and
Trademark Office (i.e., USPTO). You have to conduct a
comprehensive trademark search of all databases including federal, state, common law, domain names, etc and analyze those search results for any conflicts.
You should not end your search with just federal database at
USPTO. That is not the right way to connect a search.
It is plausible that you may trademark for free without the help of a trademark
attorney. However, it is highly risky for a trademark approval process. This is why?
70% of the trademark applications are initially refused. You may need to
respond with additional evidence including specimens etc. often citing
legal citation including case law, statutes, etc. A trademark attorney is
well equipped with dealing with these matters compared to an individual
applicant. Second, do you need a trademark attorney? If you are a US citizen or a
legal permanent residence (i.e., green card holder) then you may apply for a trademark registration without the help of a trademark attorney. Organizations
with a principal place of business within the United States are not required to
hire a trademark attorney. That means, if your organization is in any one of the 50
states conducting business, then you don’t need to hire a trademark attorney.
This is the basic minimum legal requirement for whether you need to hire a
trademark attorney or not. If you are a foreign trademark applicant, then
you must hire a trademark attorney from the United States. During the process of
your application at USPTO, you may want to invest in your brand and logo. However,
it may become unsure whether you will be able to obtain registration. Inadequate
filings for example without searches may lead to denials. Therefore, the simple
answer to whether you need to hire a trademark attorney is “no.” Third, why hire
a trademark attorney? For any successful business venture, brand recognition is essential. To manage the brand of your business, it is beneficial to have a
federal trademark registration. Generally, entrepreneurs and startup
businesses look for a cost-effective ways to get a trademark registration.
Right? Everyone wants to get the trademark registration for a low cost.
However, a self-help trademark application may not be the best option
because of the multiple nuances involved in the trademark registration process.
Due to ineffective trademark filing the process may prolong longer
than usual and most probably lead to rejection of your application. Fourth,
let’s talk about how a trademark attorney helps with the trademark
registration process? A trademark attorney usually starts with the analysis
of what is your brand name? and how can customers recognize your brand name
which can eventually lead to a federal trademark. Then, usually a trademark
attorney like myself included conduct a comprehensive trademark search. This helps filter out any competitors that may have a federal trademark
registration. Search also shows “use” based on common law with a similar brand name,
domain name, etc. Further, I will extensively review the search results
for conflicts and undertake the likelihood of confusion analysis. I will
discuss likelihood of confusion analysis in another video. I will
determine what type of mark that needs protection? Standard character mark?
Design mark? or stylized mark? or both. I will figure out the appropriate
international class for your goods and/ or services. You may choose multiple
classes, however your trademark application fee also goes up
including your attorney fees. Then based on my consultation with
clients and analysis, I will make a choice between TEAS Plus OR
TEAS RF application. The difference between TEAS RF and TEAS Plus is that
TEAS RF provides a lot more flexibility regarding international
classes and description of your goods and services. Whereas, TEAS Plus provides
less flexibility and you need to select from a predetermined list provided by
the USPTO and there is also a a price difference between each of them. The trademark application fees for TEAS Plus are $225 per class whereas for a TEAS RF application the trademark fee per class is $ 275
per class of goods or services. It is always dependent on your
situation, whether you better we are choosing between TEAS Plus or TEAS RF
application. Attorney’s usually prefer TEAS RF because they can write
the description of goods or services by themselves, rather selecting
from a predetermined list. You need to have a specimen to show “use” in commerce. The specimen should at least be substantially similar to the mark used
in the diagram. The specimen can be in jpg or PDF format. Most of the trademark
applications are currently “in use” applications. However, for “intent to use”
based application, you need to sign an affirmation that you will “use” in the
future. Then you need to apply for electronic trademark application on the
USPTO website along with the USPTO fees. The USPTO fees is dependent on the
selection or the number of international classes. The international class
selection is based upon the type of goods and services you provide. Once you
submit your trademark application to the USPTO, the USPTO examines your
trademark application in the order they receive it. It takes about three to four
months before they can process your application. Now coming to the fifth
point, who is an examining attorney and why he or she may issue an office action? The
examining attorney works for the USPTO. The examining attorney conducts a
search of your mark. They conduct this comprehensive search to review whether
there are any competing marks in the market. They do state database
search, they do federal database search, they do common law trademark search,
they also review any domain names that maybe competing with your trademark and
analyze based on case law, statutes and based on the trademark manual. Now, coming to our sixth point, what are the trademark office action
types? The examiner may issue any of the following office action types. There are
four of them. First one is called “examiner’s amendment.” The second one is called a “priority action.” The third one is called a “letter explaining the basis of
refusal” and the fourth one is called “examiner’s amendment combined with a
priority action.” Sometimes additional disclaimers are needed along with your
answer to an office action. A few times your mark may end up only on the
Supplemental trademark register. I will discuss about the differences between
principle and supplemental trademark register in another video. For now please
remember that the principle trademark register should be your preferred form
of registration. Generally, arbitrary fanciful and suggestive marks are
inherently distinctive. You want your trademark to be distinctive. These
distinctive marks are registered in the principal register. However due to the
descriptiveness of your mark sometimes some marks that are
descriptive, generic may not be registered on the principal register.
They may sometimes be registered on the Supplemental register. Even further,
generic marks are not even registered on the supplemental register. However due to the descriptiveness of your mark your trademark may be placed on the
Supplemental register. These descriptive marks may acquire
secondary meaning through “use” after a period of a few years depending on the
strength of the marketing channels used and wide recognition in the industry.
Even then, supplemental register is better than no registration at all.
Always your preferred choice should be principal register. So the order of preference is principal register supplemental register and no registration at all. Eight, how a trademark attorney responds to the initial refusal with
substantive legal arguments? Once the examining attorney sends an Office action, the trademark attorney reviews the office action and looks for
any arguments that he or she may make in the response to the office
action. Trademark attorney response depends on the nature of the office
action issue issued by the examining attorney. There are several types of
refusals that may be issued by the examining attorney.
They include number one ornamental refusal, number two trade name refusal,
number three informational matter refusal, number four scandalous or immoral matter refusal, number five likelihood of confusion refusal. This is the most
important one. Number six descriptiveness refusal,
number seven geographical significance refusal and number eight
surname refusal, and there are several other types of refusals
but these are the most important refusals and these are some of the
substantive ones. Once the trademark attorney reviews these refusals, they will look at the case law, they will look at the statutes and plan
accordingly how to respond to these refusals. Once the examining attorney
receives the response to the office action the examining attorney reviews
the response and if he or she is satisfied with the response, then
the mark will be published in the Official Gazette. Anyone who wants to
oppose may do so in the 30-day period following the publication. If there is no
opposition within the determined time frame with the USPTO, then you may be
issued a trademark. The entire USPTO trademark registration process may take
anywhere from eight months to 11 months. Sometimes it may take closer to a year
due to the additional queries involving office actions. Most of the time these
additional queries are part of the process. If someone who is not a
trademark attorney or a trademark lawyer for that matter provides services, then
the process may drag on longer. It is in your best interest to hire a trademark
attorney. Why hire me for trademark legal services? I offer comprehensive trademark
search, trademark registration with USPTO, office action response, trademark renewal,
trademark monitoring, statement of use affidavit, trademark assignment,
any incontestability affidavits etc. I also offer copyright registration
services. Please check my website at affordabletrademarkattorney.com. You can contact us via phone at +1 612-440-1784. You can also e-mail me at [email protected]

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