How to Obtain a Federal Trademark Registration
To obtain a Federal trademark registration, the process is initiated by completing and submitting a Federal Trademark Application with the USPTO. The trademark application identifies the desired trademark, owner of the trademark, the particular goods and services that will be or are already in use with the trademark. Additionally, there can be other statements, such as disclaimers, assertions of ownership of other registrations, submitted translations or meanings of the trademark in another language or in the trade.
Upon filing, a filing receipt will be received that identifies a trademark application number. The number comprises an eight digit number where the first two digits are a “series” number and the next six digits are a sequential number in the series number. Each series, therefore, has 999,999 possible application numbers.
A few months after filing, the application will be examined by an Examining Attorney at the USPTO. The Examining Attorney will examine if the mark is distinctive as to the particular goods and services identified, determine if there is a likelihood of confusion with a previously Federally registered trademark, and whether the mark complies with certain procedural matters and requirements.
If there is an issue with any of the foregoing steps in examination, the Examining Attorney will issue an Office Action (also commonly referred to as an Official Action, or a Rejection). The applicant will have an opportunity to respond to the Official Action through argument which may be accompanied with certain amendments. In response, the Examining Attorney may issue a Final Office Action if he or she deems that issues remain, or may approve the mark to proceed to the next step. In any final decision of the Examining Attorney, the applicant has the right to appeal the decision to the Trademark Trial and Appeal Board (whose decisions may be appealed through the Federal Courts all the way to the Supreme Court).
If the Examining Attorney approves the mark to proceed, the mark is “published” for Opposition. It is through this publication procedure that all approved marks are identified by the USPTO through publication in the Official Gazette. The publication allows a third party to see what marks have been approved to determine if the issuance of a Federal Registration will hamper the third party’s rights that the third party may believe to be superior. If the third party believes that they have superior rights, they may oppose the trademark application. If there is an “opposition” the application process stops and an opposition proceeding is initiated in the Trademark Trial and Appeal Board. Statistically, while oppositions do occur, the likelihood of a trademark application being opposed is rather low.
If there is no opposition filed during the opposition period, then the mark is cleared for Registration. In due time, the registration certificate will be prepared, with a registration number assigned, and a registration date. The certificate will then be sent and the mark is deemed Federally Registered.
Where an application is filed as an intent to use trademark application, prior to final registration, the owner must prove to the USPTO that use of the mark has initiated (the official name of the document is a Statement of Use).