Registering a trademark in the United States is a vital step in protecting your brand and intellectual property. By following this step-by-step guide and working with the United States Patent and Trademark Office (USPTO), you can successfully navigate the trademark registration process in the US. Keep in mind that the overall process, including examination, publication, and potential opposition, can take up to 12-18 months or more, so it's essential to plan accordingly.
Preliminary Trademark Search
Before registering a trademark in the US, it is recommended to conduct a preliminary search to check if the desired trademark is available or if there are any similar trademarks that may cause confusion. The United States Patent and Trademark Office (USPTO) manages the US trademark database, and you can perform a search on their Trademark Electronic Search System (TESS):
Prepare the Application
Once you have ensured that your desired trademark is available, you need to prepare the application. The application should include the following information:
- Applicant's name and address
- Representation of the trademark
- List of goods and services for which the trademark will be used
- Basis for filing (use in commerce or intent to use)
Submit the Application
Submit the trademark application to the United States Patent and Trademark Office (USPTO) through their online Trademark Electronic Application System (TEAS):
After submission, the USPTO will assign an examining attorney to review the application for compliance with formal requirements and conduct a search to identify any potential conflicts with previously registered trademarks. This examination process generally takes around 3 to 4 months. If the examining attorney identifies any issues, they will issue an Office Action, and the applicant will have six months to address the concerns.
Publication and Opposition
If the application meets all requirements, the examining attorney will approve the trademark for publication in the Official Gazette. This publication initiates a 30-day opposition period during which third parties can file an opposition against the registration of the trademark.
Registration and Issuance of Certificate
If no oppositions are filed or if they are resolved in favor of the applicant, the USPTO will proceed to register the trademark. If the application was filed based on actual use in commerce, the USPTO will issue a registration certificate. If the application was filed based on intent to use, the applicant must submit a Statement of Use showing the trademark in use in commerce. Once the Statement of Use is accepted, the USPTO will issue a registration certificate. The trademark will be valid for ten years from the registration date.
Trademarks in the US can be renewed indefinitely for ten-year periods. To renew a trademark, the owner must file a renewal application with the USPTO and pay the required fees before the expiration date or during a six-month grace period after the expiration date. Additionally, trademark owners must file a Declaration of Continued Use or Excusable Nonuse between the fifth and sixth anniversary of registration.