The Trademark Process: Things to Consider Before Your Initial Trademark Application

Applying for a trademark can be incredibly useful if you are looking to grow your business and maintain a brand identity with your customers. However, applying for a trademark can be a lengthy process that requires considerable time and resources. Trademarks are filed with the United States Patent and Trademark Office. Although you are considered a trademark owner when you begin using the mark in commerce, the USPTO filing grants your trademark protection in all 50 states, and you have rights to your word mark or logo in association with your specific goods and services.

The initial application for a trademark through the USPTO can cost $250 - $350 per mark, and it may take the USPTO around a year to review your application. After this initial review, it is possible your application will be rejected, or the USPTO will have corrections in the form of an office action that requires a response. Considering all of these factors, it is important to do the prep work to ensure that your trademark is unique and can be registered to avoid any potential conflicts and wasted resources. There are certain measures that should be taken before you submit an initial application to ensure the greatest probability for your trademark to be registered.

The first step taken in the trademark process is to conduct a trademark clearance search. This initial search accomplishes a few things such as providing insight on how likely an application is to be accepted/rejected and it shows if the mark is currently being used. If the mark is in use, you will need to determine if the mark (and its purpose) is similar enough to cause a likelihood of confusion to consumers. Determining whether your trademark will cause confusion depends on the appearance, sound, and similarity in design elements of the mark. Not only can similarity be determined by the wording, but they can also be determined by the similarity of the mark with the goods and services the business provides. These goods and services are broken up by an international class number, which is how you distinguish the purpose of your business when you apply.

Determining whether your desired mark may cause a likelihood of confusion to consumers is commonly a more confusing task during trademark applications. You could potentially lose $250 by applying, and it being rejected on the basis of likelihood of confusion. It is also possible that if your trademark gets approved by the USPTO, but another business that you did not recognize in your initial search has been using the mark for much longer, you could be met with a cease-and-desist letter or a lawsuit.

For example, you may have completed a trademark search, find no conflicts, apply, what happens next? After about a year the USPTO will review your application, they will either approve and publish your mark, or they will send you an office action. Office actions are any corrections the USPTO would like you to make to your trademark application. These need to be corrected and submitted within 3 months of receiving them, or you will need to pay a fee for any late submissions.

After your trademark is approved, there is maintenance that needs to be done on the mark in order to keep your trademark alive. Trademark renewals go off of the schedule listed below:

• First Renewal: 5-6 years from the registered date

• Second Renewal: between 9-10 years from registered date

• Continuously every 10 years after that

Although you can complete this application without hiring an attorney, the advice and expertise of a licensed trademark attorney can be extremely useful when completing this process. At Mountain West Law, we offer services to support you throughout the entire trademark process. We will complete a clearance search and a trademark application for a flat fee. Some additional services we provide billed at an hourly rate include:

• Responding to office actions.

• Searching for trademark infringements monthly and sending out cease and desist letters.

• Filing trademark renewal applications.

To get in contact with one of our trademark attorneys, you can email Brooke Ashton or Lacie Lujan whose contacts are listed under the “About Us” tab on this website.