Trademark Search, Application, and Registration Process with
U.S. PTO
by Mark Cameron White of White &
Lee LLP
This paper summarizes the registration process and the costs associated
therewith. The specific fees and costs are listed after
the content. The process for registering a trademark includes
the following:
All potential trademark and service marks should be searched prior to registration to determine availability, possible conflicts, and a trademark strategy. A preliminary "on-line" trademark search can be conducted which pulls information from an on-line computer database. The on-line search can be used to identify whether others already have rights to the proposed mark, but inasmuch as it accesses a limited database, it should not be relied on for clearing the use of a mark. We recommend a more comprehensive search that utilizes a variety of databases. These comprehensive searches are performed by national search firms such as Thompson & Thompson or Corsearch. Once a search report is issued, we will analyze the report and make recommendations to you regarding the availability of the proposed mark based on the search results.
Depending upon your time frame, an on-line search can be conducted in one day, and a more comprehensive search can be ordered for delivery within one week. The comprehensive search reports can also be obtained on an expedited bases (generally two-day turn-around); however, the searching companies charge a premium for this service.
Once it has been determined which mark or marks may be registered, an application should be prepared for each mark, and submitted to the US Patent and Trademark Office (“PTO”) in Arlington, Virginia. The application specifies the use of the mark, the presentation of the mark (e.g. a plain word mark, a stylized word mark, a design mark or a combination of words and a design), and the classes in which the mark is to be registered. For example, a trademark that is used in connection with specific goods (e.g. software) would be registered in PTO’s designated class for those goods. If that same trademark is also used in connection with services (e.g. consulting or training services), it should also be registered the additional class or classes designed by the PTO for such services. The application should give a somewhat broad definition of the products or services for which the mark will be used, so as to exclude subsequent users of competitive products; however, care must be used in framing the description because if it is too broad, it will be rejected by the PTO as indefinite.
Once the application has been recorded into the database at the Trademark office, it is assigned to an "examiner". After reviewing the application, the examiner may accept the application as submitted or raise objections based on a variety of grounds. The three most common reasons for rejection include: (a) rejection due to the breadth of the definition for the product or service for which the mark will be used; (b) rejection due to the "descriptiveness" of the mark; or (c) rejection based on a likelihood of confusion with an existing registration or pending application. As to the descriptiveness objection, applicants should avoid marks that merely describe the product, and instead to select "suggestive" or "arbitrary" marks which are not likely to be challenged by an examiner. With respect to a likelihood of confusion, applications seeking registration of marks that are confusingly similar to a registered mark or a previously filed application will not be allowed registration. The trademark search report is an excellent tool for determining whether there are existing similar marks that may prevent registration of a particular mark.
It is the objective of the US Patent and Trademark Office to examine all new applications within 3 months after having been filed; however, all applications are handled in the order in which they were received, and backlogs frequently occur. On the average, it generally takes approximately 4 to 6 months for an examiner to be assigned to and/or review the application. If the examiner raises an objection, he or she will issue an office action requesting that the applicant address the concerns stated in the office action. The applicant then has up to 6 months to respond to the examiner’s concerns. Once the examiner is satisfied that the application meets all legal requirements, then the mark is published in the PTO’s "Official Gazette", which is publicly distributed throughout the United States. Any trademark owner with a confusingly similar mark may challenge registration of the mark by filing a Notice of Opposition with the PTO. If no Notice of Opposition is filed, the mark will be approved for registration. If a Notice of Opposition is filed, the parties must then go through an evidentiary process after which the examiner will make a determination as to whether the applicant’s mark may be registered. Alternatively, the parties may reach a settlement concerning the scope of use of their respective marks. Assuming a settlement is reached or the examiner rules in the applicant’s favor, the application will be approved for registration.
The entire U.S. registration process normally takes 15 to 18 months. Notwithstanding this, a mark may be used in the interim period on a common law basis assuming that the applicant is the first to use the mark in connection with the goods or services used with the mark. It is also possible for an applicant to file an "intent to use" application if the applicant is not yet using the mark, but has a bona fide intention to use the mark in the near future. The applicant may then use the filing date of the intent-to-use application as the date of first use of the mark, even though the mark is actually used at a later date.
You should be aware that registration of a mark in the U.S. does not provide trademark protection overseas. In this regard, the rule in the U.S. is that the first user of a mark has rights to the mark while the general rule outside of the U.S. is that the first person to file an application for registration of a mark has rights to the mark. As a result, there is a risk that distributors or other persons in foreign countries may register a mark that is registered in the U.S., thereby preventing the U.S. owner from using the mark in that country. To avoid this result, you should consider registering your marks in the major commercial markets in which you plan on distributing your trademarked products.
The following charges apply to trademark registration:
1. on-line trademark search = $75 - 150
(actual charges incurred)
2. comprehensive trademark search = $385 – one week service
$625 – 2-day service
(actual charges incurred depend upon requested turn-around time)
3. preparation of trademark application = $500
4. PTO filing fee per Class = $245
5. prosecution of trademark
attorney = $135 - 250/hr
legal assistant = $85/hr
You might expect that total costs for a single trademark registration will equal $1,500 to $2,000 per mark. International registration is conducted through agents in each country in which a mark is registered and is billed at actual rates charged by the foreign agent.
