The journey of trademark registration begins with designing a trademark that falls within the four corners of the definition of trademark provided by the Lanham Act. The mark should be able to distinguish its services and/or goods from those of others. While designing a mark, the applicant should be aware of the absolute and relative grounds of refusal and accordingly design the mark so that the application is not refused by the USPTO.
Step 2 involves Determining the classification of services and goods to be trademarked -
It must always be remembered that trademark protection is not restricted to the mark alone, but it is a protection that extends to the services and goods registered under the trademark. Therefore, it becomes quintessential to determine the classes of services and goods within which the trademark has to be registered. Once the application has been made, the applicant does not have a chance to make additions to the application with respect to the classes of services and goods.
Step 3 involves Conducting a prior trademark search before filing the application -
Conducting a prior trademark search before filing the actual application for trademark registration is a practice that is emphasized by trademark experts because it helps the applicant to ascertain the availability of the proposed mark and helps to finds out the existence of prior similar or identical marks on the trademarks register. This helps to avoid instances of objections and opposition with respect to the mark.
It is often advised by the trademark consultants at Enterslice to conduct a comprehensive trademark clearance search in the USA in order to ascertain the availability of the proposed mark and to reduce the chances of any objections or oppositions with respect to the proposed mark later on. Additionally, it is also emphasized that the company should also carry out a domain search of the proposed trademark in the USA. Similarly, it is advisable to conduct a comprehensive search for a figuration trademark.
Step 4 involves Filing the application for the registration of a trademark - A trademark application can be filed for a single class or multiple classes at the USPTO.
The trademark application can be filed in the following two categories: • Ordinary Application • Convention Application (while claiming priority from a convention country). 1 Ordinary Application Ordinary Applications are those application where the trademark applications that are filed without claiming any priority. An ordinary application is always filed online i.e. mandatory electronic filing. Multi-class trademark applications can be filed in the USA, too.
2 Convention Application Trademarks Act also lays down the provisions regarding the filing of Priority Application wherein a priority of the mark can be claimed in the said mark in the Convention country as per the Madrid Convention or Paris Convention.
Step 5 involves Examination of the mark by the USPTO -
After filing the application, the USPTO assigns a serial number to the application that meets the minimum filing criteria. Thereafter, for about six to eight months, the application is examined by an examining attorney. The examining attorney examines the trademark application on both absolute and relative grounds.
Step 6 involves Publication of the proposed mark and opportunity for opposition -
If the examining Attorney does not find any objections in the application or the applicant overcomes all the objections, then the application is approved by the Attorney and sent for publication. Any party who feels that its reputation will be damaged after the registration of the mark is given a period of 30 days to raise opposition, or they can ask for an extension of time to oppose.
The minimum filing requirements and information to be provided in an application for the registration of a trademark in the USA include: • Name and address of the applicant; • Specification whether the applicant is a natural person or juristic person (mention whether the latter is a legal entity or not); • Citizenship of the applicant; • A clear drawing of the mark; • Filing fee for at least one class, and; • Identification of goods and/or services for which trademark is sought.
