Here at DLO, we do a lot of lawyering, but we also do at least as much, if not more, advising. As we’ve said before, folks come to us for things that they don’t know how to do or don’t have time to do well, and we take that job and their trust in us very seriously. Time and again, we’ve been told that once we explain things (and particularly, what to expect/how long each step generally takes) they’re far less scary, so we’ve decided that we should do MORE of that, and this is the second in our series. Welcome to the Roadmap for filing a trademark.
- Have Something You Can Trademark: This part seems obvious, but can be pretty confusing. There are a number of ways to protect things you have created (also known as your “intellectual property”) and those include not sharing them and treating them as trade secrets, copyrighting, patenting and trademarking. So what things are able to be trademarked. You can trademark something that (a) identifies your goods or services (though this is known as a service mark, but filed the same way) and helps the public tell them apart from someone else’s, that has nothing to do with the form or function of your goods/services. You must also ensure that it doesn’t (b) infringe someone else’s trademark, and (c) that you use in commerce – you have to be attempting to make money from it in intrastate commerce, which means if you only sell it at a stand outside your house, it may not be trademarkable….but if you sell it at a stand outside your house AND have a website where folks can buy it, it likely is. TIME TO COMPLETE – As long as it takes you to meet all the required elements.
- Complete a Search. This can be as formal or informal as you want. Formal search companies may charge up to $1000 or more to complete a search, but this will likely include a search of all 50 states registered business names, the records of the US Patent and Trademark Office (USPTO), and often an opinion as to the likelihood of success of any trademark application. Though there are times when a formal search is best, often applicants simply search Google records and USPTO records to see if there are any existing trademark applications (or current uses in commerce) that are too confusingly similar to their mark. TIME TO COMPLETE – For a formal search through a company, likely 2-4 weeks. For an informal search, as long as it takes to Google and check the USPTO.
- File with the USPTO – This is the step people think of when they think “I’m going to get a trademark”. This step requires visiting the USPTO website and filling out one of the types of trademark applications. The type you choose will depend on whether you are currently using the mark in commerce or whether you intend to start using the mark in commerce soon, and the cost for filing can range from $275-$350 per class (type of good or service) depending on how much you are able to submit online with this application. TIME TO COMPLETE – A few hours.
- Wait, and then Respond to any Office Actions – This step is somewhat of a crap shoot. Sometimes, the Trademark Examiner will skip this step entirely and will simply say “Yes, this mark is acceptable to register” in which case you’d jump immediately to Step 5. However, in most cases, the Examiner has some sort of objection or question they want to ask, and the Office Action is the form they use to communicate with Applicants. Once you receive the Office Action you have 6 months to respond, or else your mark will be abandoned and you will have to start the entire process over. TIME TO COMPLETE – It can take between 2-6 months to hear back from the Trademark Examiner.
- Let the World Know –You have a trademark! You’re going to want to start letting others know, and the ® used after the trademarked term or logo will accomplish that. Be sure to include this on all future printings of labels or packing materials, and go forth and do business with protected IP!