Once you’ve developed a good name for your product (or service) (otherwise knows as a “mark”), you need to protect it. But how do you do that? Let’s start by considering the two very basic types of legal protection for marks: unregistered versus registered.
Unregistered Marks
A little-appreciated fact is that you don’t have to register a mark with the United States Patent and Trademark Office (“USPTO”) in order for the mark to gain legal protection. Rather, the mark gains legal protection as soon as you start using it in commerce. The source of that protection of an unregistered mark is the “common law” (i.e., it gains protection just by using it). THAT SAID, I highly recommend registration because common law marks enjoy far inferior legal protections than registered marks.
Registered Marks
I highly recommend registering your mark, because registration brings with it so many more legal protections than common law does that they’re too numerous to list in this short blog post. For instance, after you’ve registered your mark, you can enforce it in all 50 states (which you can’t do with a common law mark, where you’re limited to your geographic location). Also, after five years of being registered, your mark can obtain a status called “incontestable,” which is almost exactly what it sounds like. Further, and very valuably, the owner of a registered mark can recover its attorney’s fees from the defendant after winning an infringement fight (which is not usually the case with an unregistered common law mark).
Registration of a mark only comes after the USPTO has approved your online application. There are essentially two steps/phases for obtaining registration: first the application, and then the registration itself. First, the application: you have to tell the USPTO certain things about the mark and either show the USPTO evidence that you’re currently using the mark in commerce, or that you have an intent to use it in commerce relatively soon. You also need to tell the USPTO what kind of business or businesses or industries you’ll be using the mark in, and your registration is limited to those businesses/industries. (In other words, just because you register the term “Acme” for use in the surfboard industry doesn’t mean you can prevent someone else using the term in, say, the plumbing industry.)
The fee depends upon which type of application you use, but the most simple application currently runs at least $275.00, and that’s $275.00 per line of business/industry you want to register the mark in. E.g., if you’ve got five different lines of business in which you want to register the mark, then multiply the application fee by five.
After about three months, the USPTO assigns your application to an Examining Attorney in D.C. That attorney is a USPTO employee who reviews your application and passes judgment upon it. Frequently the Examining Attorney seeks clarification of something, or thinks that what you’ve asked for is too broad, in which case the USPTO, through its Examining Attorney, issues a letter to the applicant called an Office Action. An Office Action must be replied to within six months of its date or the application will be deemed abandoned.
If an Office Action is issued then the applicant and the Examining Attorney have a conversation (through the USPTO web portal only if you’ve elected the least expensive filing fee) and, hopefully, the issues raised in the Office Action are addressed to the Examining Attorney’s satisfaction.
When the Examining Attorney is satisfied with your application, the application is approved but you’re not at the “registration” phase yet. Next the mark has to be published in a USPTO publication called the “Official Gazette,” which acts as notice to the world that someone’s applied for registration of your mark. Anyone who owns a registered mark can see your application, and if they think your mark is too similar to theirs then they can contest your application. What happens then is beyond the scope of this blog post, but suffice it to say that it can be a bit of a fight depending on the parties and the value of the competing marks.
But, if nobody contests your mark within 30 days after publication in the Official Gazette, then your mark becomes registered. The USPTO will notify you of the same, and mails you a nice certificate of registration (which looks and feels a bit like a diploma).
The entire process can take at least six months, but I typically tell clients to expect nine to 12 months from application to registration. The Examining Attorneys are good and diligent people, but they’re overworked and the time frame depends upon their workload.
So that’s the process in a nutshell. Let me know if you’d like assistance with a trade- or servicemark application.
Greg Borman is an attorney in San Diego, California, who advises and represents businesses of all sizes and stages, as well as their owners. He can be reached at greg@bormanlaw.com or at (858) 232-7100.
