Three Ways to File a USPTO Trademark

USPTO trademark

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There are three doors to file a USPTO trademark application. Whether you file on your own or hire a trademark attorney, it’s helpful to understand the three common ways to file your USPTO trademark, and the procedures used by the Trademark Office to decide if your UPSTO trademark application will be approved. The three ways include the Intent to Use Trademark Application, the Actual Use application, and for foreign applicants, to file using an existing foreign trademark application or registration as the basis for a USPTO trademark.  The Intent to Use Trademark requires a second step, namely to file a Statement of Use Trademark.

All roads lead to Rome. These three doors lead to a USPTO trademark.

Each of the three doors will lead to a registered trademark, provided your USPTO trademark application meets the government regulations. You will be more likely to obtain a registered trademark if you know what lies behind the three doors to a registered trademark. Then, choose one of the three doors to a registered trademark that’s right for you. And, before you file, use the Brandaide 3-Step Trademark Registration Process SELECT | SECURE | SUSTAIN™. Learn More.

Let’s get started:

There are three questions and three doors. Answer yes to one of them, and follow the path through the appropriate doorway.

uspto trademark Intent to Use trademark

Door No 1:  I have not yet sold my product or service to the public.
Door No. 2: I’ve been selling products or services to the public.
Door No. 3:  I live outside the US and have a registered trademark or application in my home country.

Regardless of which door you choose, your application will go through the same examination process explained below. The only difference is the initial requirements for entry through each door are slightly different. Additional documentation will be required behind two of the doors before you reach your goal to a registered trademark.

Which door should you enter to file a USPTO trademark?

Door No. 1:  INTENT TO USE TRADEMARK – I have not yet sold my product or service to the public

INTENT TO USE TRADEMARK. If you are a startup, or have developed a new product but have not yet started selling it, you can “reserve” your trademark before you sell your product or offer your services. This is the Intent to Use Trademark application.

Instead of a registration certificate, the “Intent to Use Trademark” (ITU) applicant receives a “Notice of Allowance” that guarantees the right to register once you actually begin to sell the products or services. Then, you must file a statement of use trademark, pay an additional fee, and file acceptable samples of use before the registration can issue. Once the samples and statement of use trademark are accepted, you will receive the registered trademark certificate.

When you are unable to prove public use in commerce within six months, you can obtain up to 4 successive 6-month extension periods upon payment of the prescribed fee.

Door No. 2: ACTUAL USE: I’ve been selling products or services to the public

ACTUAL USE. Behind Door 2 lies the most direct path to registration. If your company has been selling a product or service to the public, then file the application with proof of use and go straight to registration. The key to this path is that the application must state the dates of first use, and include samples proving use that meet strict federal regulations.

Door No. 3: I have a trademark application or registered mark in another country

SECTION 44(a)(b). Section 44 of the trademark statute allows a foreign trademark owner or applicant to file in the US. Door # 3 is special for a couple of reasons. First, if the applicant chooses Door 3 within 6 months of filing in the home country, it is possible to obtain priority, and obtain the same date of filing in the US. This can be helpful to make certain no one files in the US before you to block your registration in the US. Second, no proof of use is required at all to obtain a US trademark registration once the foreign registration is issued.

Copies of the foreign registration must be filed with the US. Read: Foreign Brand Owner’s Guide to US Trademark Registration.

What Happens Behind Closed Doors—The Examination Process

Each trademark application is assigned to a trademark attorney in the Trademark Office. With 4-6 months after filling, the Examining Attorney reviews the application to determine whether it meets the legal requirements.

Statement of Use trademark

An important key to successful trademark registration is filing the initial application correctly. This includes knowing what and how to file, namely based upon a strategy that maximizes the chances of success. This typically requires significant experience, since if the application is filed incorrectly, some errors cannot be corrected. The application will be lost.

Formalities that must be met include claims of ownership, the category of goods or services, the description of goods or services, the manner of use, and whether the samples of use are acceptable. If filing defects are present, the application will be rejected. Read: 5 Reasons Your Trademark Application will be Rejected.

The Trademark Examiner will evaluate whether the proposed trademark is distinctive and not a descriptive trademark. This is by far the biggest problem for new brand owners seeking to register a trademark. A mark that describes the goods or services or even a quality or ingredient of the goods or services cannot be registered. Read: 5 Choices for a Trademark and Two of them are Bad.

70% of all US trademark applications receive an initial rejection, called an Office Action.

Next, the Examiner reviews pending and existing federal registrations to see if there is an earlier-filed application or existing registrations that are confusingly similar. Other marks need not be identical in order to cause yours to be rejected. In fact, most are not identical and may include a common word, prefix or other elements. The marks cited against your USPTO trademark may also be registered for non-identical, but related goods. The latter can be quite complex and usually require an experienced trademark attorney to successfully respond.

The majority of all applications receive a first refusal, called a USPTO Office Action. An Office Action must be answered within six months or the application will be abandoned.

Once approved, the application is “published” publicly for opposition and any other brand owner, or anyone who feels they could be damaged, can file an opposition to prevent your registration. If no one opposes within 30 days, approval of the registration will issue, or the Notice of Allowance will issue.

Congratulations, once you enter by one of three doors to a registered trademark, and pass the examination process you are on your way. Trademarks are valuable business assets. Make certain to maintain your trademarks and use them correctly. Go forth and become a well-known brand.

When its time for you to trademark a name, review this Consumer Guide to the Best Trademark Service to make a smart choice.

Updated 10/04/2021.

 

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