After an eight-month process, my brand joined 4.4 million others when the United States Patent and Trademark Office granted it trademark status on Christmas eve.
Obtaining that small, non-descript capital letter “R” enclosed in a circle that now rests adjacent my logo required more than a little research and planning. As with most anything unfamiliar, the process presented its own unique uncertainties and opportunities for anxiety.
The first sentence on the filing page declares:
The trademark registration process is a legal proceeding that may be complex and require you to satisfy many requirements within strict time deadlines (based on Eastern Standard Time); therefore, you should consider hiring an attorney before starting the process.
I considered my options. Online filing services ranged from several hundred to several thousand dollars, depending on the level of personal service and comprehensiveness of the search for potentially competing trademarks.
I decided not to be intimidated by the uncertainty and dived in, reading countless pages of directions and best practices along the way.
With a little patience, research, and planning, personally registering a trademark can provide significant savings and gain you useful experience.
BEFORE YOU APPLY:
In order to complete the application, you’ll need to have a rendering of the logo if you intend to claim specific font(s), color(s), or other design elements. Additionally, you’ll need to provide a “specimen” of the mark that proves its prior use in commerce.
This can include a host of options that highlight the logo in a commercial context — from a screenshot of a commercial website or business card to an invoice on organization letterhead.
I submitted my trademark application on May 13, 2013 and used my business card for the specimen.
The system advises you that it will assign an examining attorney to your application approximately three months after submission.
THREE/FOUR MONTHS AFTER APPLYING:
The USPTO assigned Virginia-based examining attorney Geoffrey Fosdick to my application on Aug. 29, about 14 weeks after I submitted it. He approved it for publication the same day.
WITHIN FIVE MONTHS OF APPLYING:
Within five months of applying, you should receive your first notice from the UPSTO.
You will either be notified that the examining attorney found one or more competing marks or that no competing marks were found and your mark will be published in the Official Gazette. The Gazette is a publication that allows the public to preview pending trademarks and contest their registration, if applicable.
I was notified on Sept. 18 that my mark would be published in the Oct. 8 edition of the Gazette. The publication had more than 1,700 pages that day and, after scrolling to page 1,095, I found my mark.
Once published, potentially affected parties have a limited timeframe in which to contest the mark’s registration.
“Any party who believes it will be damaged by the registration of the mark may file a notice of opposition (or extension of time therefor) with the Trademark Trial and Appeal Board,” according to the UPSTO. “If no party files an opposition or extension request within thirty (30) days after the publication date, then eleven (11) weeks after the publication date a certificate of registration should issue.”
SEVEN TO NINE MONTHS AFTER APPLYING:
If no opposition notices or extensions are filed, you can expect to receive a registration certificate and packet of supplemental information within three months.
Once registered, trademarks can have an indefinite lifespan, if properly handled. This contrasts with US copyright law, which stipulates that copyright lasts for the creator’s life plus 70 years.
Trademarks do need to be renewed periodically, within the first five- and six-year period following initial registration, between the ninth and 10th year following initial registration, and then every subsequent decade.