Many of our clients reach out to us to assist them with trademark protection. They want to know about the process for registering their name, logo, or slogan with the U.S. Patent and Trademark Office (USPTO). This article provides an overview of how we advise our clients on clearing a mark for trademark protection prior to the application, and how we approach the trademark application with the USPTO.
“So, Can I Just Apply With the USPTO, or is There More Involved?”
We rarely recommend submitting a trademark application to the USPTO without engaging in some level of a clearance effort before applying. This is because most businesses will spend a significant amount of time and money into their branding and marketing–investments that make it difficult to completely shift branding and marketing if you were to later be precluded from using your name, logo, or slogan.
Simply submitting an application without a clearance search carries with it two risks:
- The application can get denied by the USPTO because of an existing registration or pending application that is identical or confusingly similar with the proposed mark.
- Even if the USPTO registers a mark, there is a risk that a third party could come along and try to stop you from using the mark because, despite not registering the mark, they used it in commerce first. Many of our clients are surprised to learn that registration with the USPTO does not guarantee the right to use the registered mark in commerce. (The same is true of registering your business name with a State authority.) In reviewing a trademark application, the USPTO does a quick search into registered marks to ensure that no other party receives a federal registration for an identical or similar mark but, ultimately, ensuring that the mark does not infringe on any confusingly similar marks is the applicant’s responsibility.
Both scenarios can prove costly for a business. First, the USPTO does not refund application fees, so if an application gets denied, the applicant will never see a return on that investment. Second, defending a trademark infringement lawsuit can prove costly, especially if a court finds that you acted in bad faith by using the name, logo, or slogan.
The purpose of the trademark clearance process is to minimize both risks. By making a relatively small investment prior to submitting an application, a business can avoid much higher costs in having to resubmit multiple applications, having to shift branding and marketing after making significant investments in those aspects of the business, or defending a trademark infringement lawsuit.
The Clearance Process
The benefits of a trademark search and clearance are many:
- Know if your proposed name, logo, or slogan is strong;
- Protect your investment in your branding and marketing;
- Avoid loss of the USPTO filing fee; and
- Shorten the timeline for approval of your application.
The goal of the clearance process is to identify any marks, whether registered or not, that are currently used in commerce and that are identical or confusingly similar to the proposed mark. (A “mark” can be either a name, logo, or slogan, and it is the thing that identifies the source of the goods or service being offered.)
The clearance process begins with a search into existing marks, and it is broken into two phases: an initial “screen” search, and a more thorough “full” search.
Screen Search (critical)
Description: In the screen search phase, we look through the USPTO’s online searchable database of registered marks to find any problematic marks on the registry and the supplemental registry and we do a brief search for similar marks on search engines.
Benefits: This step is critical because this is similar to what the examining attorney at the USPTO will do when reviewing a trademark application. If an identical or confusingly similar mark is already registered with respect to similar good or services, the application will be denied. In most cases, this is the quickest and most efficient way to rule out a mark that would have difficulty getting through the USPTO registration process.
Next Step: Typically, if the screen search does not uncover any existing registrations that would lead us to advise against using a particular name, logo, or slogan, we recommend conducting a more thorough “full” search.
Full Search (recommended)
Description: In this phase of the search, we retain a third-party vendor with advanced search tools to conduct a search beyond the USPTO database of registered marks. The vendor will look at state registrations and common law sources to find confusingly similar marks that may have priority in use.
Benefits: This step is highly recommended because, as described above, trademark law in the U.S. gives priority of use to whoever used a particular mark in commerce first (even if that mark has not been registered). Conducting a third-party trademark search into state registrations and common law sources minimizes the likelihood that there is a third-party using the same mark with respect to similar goods or services but without having the mark registered.
Next Step: The results of the clearance search dictate the next steps. Typically, we may recommend one of three different steps based on what the full search finds:
- Move forward with the application without any modifications;
- Modify an aspect of the trademark application (including, for example, the mark or the description of the categories of goods and services in which protection is sought); or
- Conduct further investigation into one or more marks discovered through the trademark search.
Investigation (if necessary)
Description: We typically recommend an investigation into an existing mark only if we need to gather additional information about some aspect of the mark, such as how it is used, the date of first use, whether the mark is currently in use or abandoned, the goods and services with respect to which the mark is used, and the geographic reach of the mark.
Benefits: Often times the full search will uncover a state registration, domain name, social media account, or other reference without information on the goods or services or geographic area in which the mark is used. Similarly, a mark may be abandoned without showing up as such in the full search report. The purpose of the investigation is to determine the risk associated with moving forward with the proposed name, logo, or slogan.
Next Step: The findings of the investigation determine whether we recommend to:
- move forward with the trademark application,
- modify the application, or
- abandon the proposed mark and try to register another mark entirely.
Clearance Legal Opinion Letter (recommended)
Description: Once the trademark search (and any applicable investigation) has concluded, and assuming that we believe that the mark can be registered and used without infringing on another mark, we can draft a legal opinion letter as to the availability of the mark for registration and use in the U.S.
Benefits: The letter will give our clients the peace of mind to invest in their branding and marketing, knowing that there is a low likelihood that a third-party can successfully stop them from using that mark. But more importantly, the letter serves the purpose of being admissible in a trademark lawsuit to negate an allegation of bad faith and to minimize damages (e.g. attorney’s fees, punitive damages, lost profits, etc.), which can skyrocket.
“This Sounds Like a Lot. What if I Can’t Afford or Don’t Need This Involved of a Process?”
The process described above is the ideal process, and it provides the most amount of protection for your branding. However, not every client engages in the same amount of clearance search. The extent of the trademark search for each client may vary depending on the client’s budget and tolerance for risk. The more extensive the clearance search, the less likely that a third party will try to enforce superior rights at a future date. Your tolerance for risk may depend on how much you will invest in your branding and how much time and money it would cost you to change your branding if a third party were to successfully stop you from using your name, logo, or slogan.
“Is There Any Guarantee With the Search?”
No trademark search can be 100% accurate. There will always be a risk of someone with superior rights who we, or our vendors, cannot identify online. But the purpose of the clearance process is to minimize the risk to the extent possible.
“What if the Trademark Search Turns Up An Identical or Confusingly Similar Mark Currently in Use?”
There is a risk that after going through the clearance process, we recommend not to move forward with the proposed name, logo, or slogan because of the risk that the USPTO will deny registration and/or the risk of infringement on another existing mark. For this reason, it is best to identify a backup name, logo, or slogan in case the primary one carries too much risk.
Trademark Application Process
Once we complete the clearance process, we assist our clients with the USPTO application. Since most of the work will have been done already in the clearance process, the initial application itself will not take much time–generally no more than 2-3 hours.
Within 90 days after the application is received by the USPTO, an examining attorney will be assigned to review the application. If the examining attorney has any questions or needs further clarification, an “office action” may be issued. We respond to such office actions on behalf of our clients, but going through the clearance process and carefully drafting the trademark application lowers the likelihood that office actions will be issued.
In terms of timing, the application may take 6-18 months to get approved by the USPTO. Here is a helpful chart from the USPTO outlining the review process and the possible timeline for approval.
The application has a filing fee of $225-$325 per international class.
International Trademark Search
Please note that the process described above outlines our trademark search and application process for applicants seeking protection only in the United States. We can also assist with international trademark searches for applicants seeking protection under one of the many international trademark schemes.
For assistance with your trademark application, please contact us.
DISCLAIMER: The information in this article is provided for informational purposes only and should not be construed or relied upon as legal advice. This article may constitute attorney advertising under applicable state laws.