How to Register Your Brand Before Competitors Do
If you are selling a product or service, your trademark is often one of the most valuable assets.
Yet many businesses file too late or choose weak marks. Some choose the least expensive service only to discover major costly errors down the road.
Understanding the process and cost of registering trademarks will help you protect your brand early and avoid expensive corrections later.
Need to register your trademark? US patent and trademark attorney Vic Lin has a trademark application success rate of 83%. Reach out to Vic at vlin@icaplaw.com to explore working with us.
What a Trademark Application Does
A trademark application filed with the USPTO seeks federal registration of your brand name or logo.
A registered trademark can provide:
- nationwide protection;
- legal presumption of ownership;
- stronger enforcement tools against copycats;
- eligibility for marketplace programs like Amazon Brand Registry; and
- defense against federal registration of similar trademarks by third parties.
Due to these benefits, the strength of your trademark strategy will impact the likelihood of registering your brand. Of course, filing a trademark application does not guarantee a registration, and you cannot use the circle R symbol unless and until your trademark is registered.
How We Achieve 83% Success Rate: Why Strategy Matters More Than Cost
Our success rate of 83% can be attributed to wise trademark strategies.
The lack of a wise trademark strategy will ultimately cost you more time and possibly more money in the long run. Without doing proper due diligence upfront, you might end up with insurmountable obstacles that no amount of time or money will resolve.
The more you invest upfront in the trademark application process, the more you will save in the long run. Invest less upfront, and you will likely spend more resources later.
To develop the right trademark strategy, we work with each individual client to determine the following:
- Trademark search
- a search can identify highly similar registered trademarks that can block your application;
- Goods and/or services
- the selection and descriptions of goods and services will significantly impact your chances of success; and
- Earlier Filing Date
- delay can cause your application to be suspended until earlier-filed applications are concluded.
Trademark Filing Process (Step-by-Step)
Understanding the process helps explain why upfront planning will significantly improve your chances of success.
Step 1: Define the Trademark, Goods/Services and Any Uses
Before filing, we must determine:
- whether to apply for a word mark (standard characters) or design mark
- the goods or services to be identified in the trademark application
- if the mark has been used on the goods/services, the dates of first use and specimens of use
- if the mark is based on a foreign filing, the details of the foreign trademark filing
Step 2: Conduct a Trademark Search
One of the most common rejections of a trademark application is when the USPTO examining attorney finds a prior trademark filing for a similar mark. This is known as a likelihood of confusion refusal.
A knockout search of live USPTO trademark filings will help assess the risk of a likelihood of confusion refusal for your mark. Though optional, conducting a trademark search is part of a smart strategy for a smoother registration process.
Step 3: File Trademark Application with USPTO
Filing your trademark application with the USPTO includes:
- selecting the filing basis (use-based or Intent-To-Use)
- identifying the goods/services
- preparing the application materials, including specimens of use if the application is based on actual use
- electronically filing with the USPTO
Once filed, the USPTO will instantly issue a filing confirmation identifying the filing date and application number.
Step 4: Examination by USPTO Trademark Examining Attorney
An examining attorney will be assigned to your trademark application. The average wait time for the first review of a trademark application is over 4 months.
If the trademark examining attorney finds issues with your trademark application, a letter called an Office Action will be issued setting forth a 3-month response deadline which can be extended for an additional 3 months. The issues can be minor, major or a combination of both.
Minor issues can be easily resolved. On the other hand, major issues, such as refusals, will take more effort and cost to overcome.
Some of the most common trademark refusals include:
Having a smart strategy and conducting knockout searches early in the process will drastically reduce the risk of major issues.
Step 5: Mark Published for Opposition
If the examining attorney approves your application, the mark will be published for opposition.
During the 30-day publication window, any member of the public may file an opposition to the registration of the mark or an extension of time for doing so.
If an opposition is filed, plan to defend the trademark opposition if you wish to continue seeking a registration.
Step 6: Submit Evidence of Use (ITU only)
This step applies only in ITU applications. After an ITU application receives a Notice of Allowance, you will have a deadline to submit evidence of use or request extensions of time.
Step 7: Certificate of Registration
After the opposition period and any further required filings, the application will proceed to registration.
You may place the circle R symbol only after the certificate of registration has been issued.
Step 8: Post-Registration Maintenance and Renewals
Renewal deadlines are generally at the 6-year anniversary of the registration date, the 10-year anniversary, and every ten years thereafter.
Unlike patents, trademark registrations can continue indefinitely as long as the owner continues using the mark on the goods or services identified in the registration.
How much does a trademark application cost?
You find our trademark flat rates here.
Several factors may lead to further costs, including:
- number of classes of goods and services;
- filing basis (whether based on actual use of the trademark or an Intent-To-Use); and
- the number of Office Actions from the USPTO, if any, and the type of rejections or requests therein.
What a Trademark Office Action Response Can Cost
Costs of responding to a trademark Office Action range widely. For a simple non-substantive Office Action, our firm currently charges a lower flat rate. For refusals based on likelihood of confusion or mere descriptiveness, our fee would be approximately $3,800 to $6,000 for dealing with each type of refusal.
Depending upon the situation, arguing against a refusal may not be the most cost-effective way to deal with the rejection. Our firm will help determine cost-effective strategies which may involve dealing directly with the trademark registrations blocking the client’s application.
How long does the trademark registration process take?
For a use-based application, the shortest length of time to receive a registration would be approximately 9-15 months, assuming no Office Actions and no oppositions. According to the USPTO trademark dashboard, it can take approximately 5-10 months to receive the initial review by the USPTO trademark examining attorney.
For an Intent-To-Use application, tack on the additional time required to make use of the mark on the goods/services and submit a proper Statement of Use with acceptable specimens.
Need to File a Trademark Application the Right Way
Reach out to US patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you get your trademark registered.
