Securing a trademark for your name is a crucial step in protecting your brand identity and ensuring your unique place in the marketplace. This process, while seemingly complex, is a systematic journey that provides significant legal and business advantages. This guide will walk you through the essential stages of How To Trademark A Name, ensuring you understand each step towards securing your brand’s future.
Understanding the Trademark Process
Trademarking a name involves a series of steps with the United States Patent and Trademark Office (USPTO). After you’ve filed your trademark application and it has been initially approved by an examining attorney, your trademark enters the publication phase. This is a critical juncture where your trademark is published in the Trademark Official Gazette, a weekly online publication by the USPTO. This publication serves as public notice, alerting others to your intention to register your trademark.
The Trademark Official Gazette, a weekly publication from the USPTO, announces trademarks for opposition and registration.
Upon publication, a notice is sent to you confirming the publication date. Following this, a 30-day opposition period begins. During this period, any party who believes your trademark could harm their existing brand or create confusion has the opportunity to file an opposition.
Navigating the Opposition Period
The opposition process is a formal legal proceeding conducted by the Trademark Trial and Appeal Board (TTAB), which is part of the USPTO. It’s similar to court litigation but within the administrative framework of the USPTO. If an opposition is filed, you’ll need to defend your trademark application. If no opposition is filed, or if you successfully overcome any opposition, your application moves forward in the registration process. It’s important to regularly check the status of your application during the three to four months following the notice of publication to stay informed of any updates.
Registration for Use-Based Applications
For trademarks based on actual use in commerce, a foreign registration, or an extension of international registration, the registration process concludes with the issuance of a certificate of registration. This happens if no opposition is filed or if any opposition is resolved in your favor. Once registered, maintaining your trademark requires ongoing filings of specific maintenance documents to keep the registration active and enforceable over time.
Notice of Allowance for Intent-to-Use Applications
If your trademark application is based on an intent to use the trademark in the future, the process differs slightly after publication. Instead of immediate registration, the USPTO will issue a Notice of Allowance approximately eight weeks after publication, provided no opposition is filed.
A Notice of Allowance from the USPTO indicates your trademark has passed the opposition period and is allowed, pending proof of use in commerce.
A Notice of Allowance is not a registration certificate; it’s an official confirmation that your trademark has cleared the 30-day opposition period and is poised for registration once you demonstrate actual use in commerce. This notice is specifically for intent-to-use applications under Trademark Act Section 1(b).
Upon receiving the Notice of Allowance, you have six months to take one of two actions:
- File a Statement of Use (SOU): Submit evidence that you are now using your trademark in commerce with your goods or services.
- Request an Extension of Time: If you are not yet using the trademark in commerce, you can request a six-month extension to file your Statement of Use.
You can file multiple extension requests, within certain limits, if you need more time to commence using your trademark in commerce.
Consequences of Not Filing a Statement of Use or Extension
Failing to file either a Statement of Use or an extension request within the six-month deadline from the Notice of Allowance will result in your application being abandoned. Abandonment means your application is no longer under consideration. To revive an abandoned application, you must file a petition to revive it, along with the required fee, within two months of the abandonment date.
Statement of Use Review Process
Once you file a Statement of Use, it undergoes review by the examining attorney to ensure it meets minimum filing requirements and is legally sound for registration. Filing an SOU does not guarantee registration, and the filing fee is non-refundable, even if registration is ultimately refused. If the SOU is approved, registration typically follows within approximately two months.
However, if the examining attorney identifies issues with your Statement of Use, you will receive an office action detailing these refusals or requirements. This is similar to the examination process before publication. You will have an opportunity to respond and address these issues. If all issues are resolved, your trademark will proceed to registration. If unresolved, the application will be abandoned.
Overcoming Objections and Final Refusals
If you respond to an office action but fail to overcome all objections, the examining attorney may issue a final refusal. If you disagree with a final refusal, your recourse is to appeal the decision to the TTAB, which involves an additional fee and initiates a formal appeal process.
Key Takeaways for Trademarking a Name
Trademarking a name is a detailed process that involves publication, potential opposition, and, for intent-to-use applications, demonstrating actual use in commerce. Understanding each step, especially the periods following publication and Notice of Allowance, is critical for successfully registering your trademark and protecting your brand name. Navigating this process diligently will secure your brand identity and provide you with exclusive rights to your name in connection with your goods and services.
