1. Preparation to file
If you are filing for a mark that includes a logo then you want to have a PDF ready of your mark/logo design. You want to speak to a trademark attorney about the advantages and disadvantages of filing a mark together with a logo as opposed to just the word portion of the mark. You also want to consult about filing the mark in black and white vs color.
2. Conducting a search
Once you know how you want to file the mark it is prudent to conduct a search to see if it is available. The search should be a likelihood of confusion search that mimics the one that an Examining Attorney will conduct 3 months after your filing date.
3. Filing the Application
If a trademark attorney opines that the mark is available then you can proceed to file it. If based on use in interstate commerce, speak to an attorney to learn what constitutes "use", then obtain the dates that the goods and services were first sold in the United States and abroad. Also, obtain 3-5 photos of the product or service showing the mark.
The application once filed will be pending for 3 months before it will be examined.
The Examining Attorney will then issue an Office Action if there is an issue with the application. There are many types of issues that range in degree of complexity. An attorney should be hired to review responses from the Trademark Office. Once responded to the Examining Attorney will get back to you in about 1-2 months.
If approved the application will be published for 30 days giving anyone in the public an opportunity to oppose the application.
If there is no opposition and the application was filed based on a mark in use then the trademark will register. If the application was filed based on intent to use then a Statement of Use or Extension of Time for 6 additional months must be filed.
At the 5th year anniversary a Section 8 affidavit must be filed to avoid abandonment that states there is continuous use. Optionally, a Section 15 affidavit may be filed that makes the registration incontestable. The Section 15 affidavit is recommended to make for a stronger registration. Five years later the Section 8 and 9 affidavits must be filed to renew the registration for 10 more years.
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