Business Law 101 / Applying For A Trademark

Business Law 101 / Applying For A Trademark

 

By Albert L. Kelley

The trademark application process is not a quick one. Anticipate at least nine months from the initial filing of the application to final approval. Depending on the circumstances, this process can be extended even longer. The first step is completing the application. Trademark applications are done on-line through the Patent and Trademark Office website. While the form seems fairly straight-forward, thousands of trademark applications get rejected every year. Many details must be carefully completed. As an example, the goods that the trademark will be used on must be detailed. It cannot simply say “clothing”; it must specifically name all items of clothing that the mark will be used on.

With the application, you must submit a sample of the mark actually being used (If you have applied for an “intent-to-use” trademark, this will not be required until you file your Statement of Use). If the mark is for goods or merchandise, the mark must be displayed on the goods themselves, their packaging or a display at the point of sale. If the mark is for services, it may be placed on signs or in advertising. Because the application is online, digital photographs or pdfs of the mark in use must be submitted. Make sure that the sample shows the mark being used in exactly the same style as the application. Any differences will be viewed as a different mark and will be grounds for rejection. The filing fee for a trademark application is currently $335 per mark, per class (each class or category of goods or services the mark is used for).

Once the application, sample and filing fee have been forwarded to the Trademark Office, the wait begins. Approximately three to four months from filing, the application will be assigned to an attorney in the Trademark Office who reviews the application for legal sufficiency and performs a cursory search of the trademark office records to determine if the mark is already in use or is sufficiently similar to another mark which might create customer confusion.

Approximately a month after the attorney receives the application, they will do one of two things. The first option is to state the mark appears sufficient for approval. If this happens, the attorney will give a date when the mark will appear in the Official Gazette. This is a publication by the Trademark Office which displays all trademarks being considered for approval. The second option is what is called an Office Action, where the attorney rejects the trademark. There may be various reasons for rejection. There may be a similar mark already in use; the mark may contain geographic descriptions; the mark may be a generic term, etc. Generally, the reviewing attorney will advise if and how the application can be modified to comply with the Office Action. The applicant will then have 6 months from the date of the Office Action to file a response. If the response is sufficient, the examining attorney may change their position and determine the mark is now suitable for publication, or they may file a final rejection.

Once the trademark is published in the Official Gazette, the public has thirty days to contest the use of the mark or request an extension of time to object. If there is an objection, you have three options: abandon the mark, attempt to settle with the opposing party, or challenge the opposition. The challenge process can take well over a year. If there are no objections, the mark will receive final approval and a certificate will be issued.

Al Kelley is a Florida business law attorney located in Key West and previously taught business law, personnel law and labor law at St. Leo University. He is also the author of “Basics of Business Law” and “Basics of Florida’s Small Claims Court” (Absolutely Amazing e-Books). This article is being offered as a public service and is not intended to provide specific legal advice. If you have any questions about legal issues, you should confer with a licensed Florida attorney.

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