Summary of the guide:
- Laws relating to Trademark in United States
- Trademark registration process in United States
- How long does it take to get a trademark registration in United States?
- Examination criteria for trademarks in United States
- Costs for trademark registration in United States
- How long is a trademark protected for?
- When does the protection of a trademark in United States start?
- What trademark classes are available in United States?
- What are the documents required for trademark protection in United States?
- What are important deadlines for trademark protection in United States?
- Are international trademarks available in United States?
- National Vs International trademark in United States?
- Local tips for trademark registration in United States
- Service level guarantee for trademark registration in United States
Trademark registration process in United States
After you have determined that a federal trademark is right for you, If you have not determined that yet, refer to our guide: Federal vs. state trademarks, Then you need to know the trademark registration process, as it is an extensive process with multiple phases and different responsibilities. A smooth trademark protection process that leads to a registered trademark and the issuance of a trademark certificate generally passes through the following phases:
- USA Trademark availability search:
Trademark search in the United States is not a required part of the trademark protection process; however, in order to avoid unnecessary costs and basic mistakes, it is best to conduct a trademark search at the US trademark and patent office to determine whether there are any marks previously registered or filed in the United States, which may stop your trademark application from proceeding.
- Trademark ownership details – who is the person/company seeking protection?
- Trademark details – what is the trademark, what kind of trademark is it, or what is the format of the trademark? Depending on the type of trademark you are attempting to protect, the required questions and specimens will change, whether the trademark is a word, a design, or a combination thereof.
- Goods and services - what goods and services are you seeking protection for? The class number and the underlying goods are important.
- Disclosure on the basis of use for filing a trademark - whether you currently use the mark, or whether you intend to use it, the trademarks are important and will have slight variations in the trademark application process.
- Examination of a trademark at the USPTO
Formal examinations of trademarks in the USA
For the formal examination, examining attorneys will check the trademark database for any conflicts and ensure it meets the filing basis requirements. After reviewing your trademark, an attorney will determine whether substantive issues exist.
Substantive examinations of trademarks in the USA
Substantive examination is a requirement of many trademark laws, although the scope of the examination varies. Since trademark rights affect consumers, establishing rights is an appropriate measure, since issues regarding their use have not materialized yet because the trademarks have not been in use.
- Publication of the trademark in the official gazette
After a trademark is approved for publication by a USPTO examiner, a trademark is published in the Trademark Official Gazette which is a weekly online publication that is usually published every Tuesday and contains:
- Trademark information and a representative drawing for each trademark,
- Trademarks canceled
- Trademarks renewed
- Publication in the United States is usually for a 30-day period during which any member of the public who thinks they'll be harmed by the registration may oppose the trademark application.
- Registration and issuance of the trademark certificate.
If the trademark was published for 30 days, and no party filed a complaint (opposition) or filed an extension of time to file a complaint, then the last stage of the trademark application is considered registered, and the trademark certificate will be issued.
Upon registering your trademark, it will appear online in the United States Patent and Trademark Office's (USPTO) database.
Examination criteria for trademarks in United States
The examination criteria are both on absolute grounds, and relative grounds:
Trademark protection requires two basic criteria: the mark must be distinctive and must be used in commerce.
Absolute grounds encompass marks that are not distinctive or visually appealing. Deceptive or infringing marks will be automatically rejected.
In comparison, relative grounds are based on older trademarks and their rights. The USPTO scrutinizes trademarks for similar or identical previous ones lodged or registered. A conflicting mark is usually assessed based on the likelihood of confusion, which is further elaborated in the type of refusals section below.
As part of the trademark registration process, the USPTO searches its database for trademarks that have been filed or registered. To assess whether the application and a mark that is either registered or pending at the USPTO are conflicting, there are two key factors considered while assessing confusion: the first is the similarity, and the second is the commercial relationship between the underlying goods and services applied for in the trademark application.
Similarity between trademarks - similarity of trademarks is not limited to the way it sounds and the way it looks, it goes beyond:
A couple of examples of trademarks the US patent and trademark office found similar based on phonetic similarities are:
- Identical goods are pretty straightforward to define. These goods are the same class number and specific goods/services chosen. Sharing an identical class in the nice classification is not always sufficient to state that the goods and services are identical.
- Similar or related goods or services do not have to be identical. These goods can be related to the way they are purchased, consumed, or thought of by a consumer. For example, yoga pants and a yoga mat, or advertising services and magazines.
Costs for trademark registration in United States
Costs relating to trademark registration are both official and professional. Official fees are fees paid to the government for processing your trademark registration and are required to be paid for each phase of the process.
Professional fees for trademark registration
Professional fees for trademark registration in USA ranges from USD460 to USD3,500 depending on the service provider you are working with. Easy trademarks provide cost-effective solutions and have professional fees depending on the package you choose, as we leverage legal technology, which provides the brand owners with the ability to get premium service, consistency, and delivery with a cost-effective price. Once you are ready to start, choose the package you want and you will see the total official fees and professional fees for each package. Refer to Build your proposal to calculate the fees
Official fees for trademark registration
Official fees for trademarks depend on:
What goods and services are chosen
Whether the trademark is filed on an intent to use basis or actual use basis
Official USPTO fees for predetermined list of goods = USD250
What trademark classes are available in United States?
A trademark owner who is usually referred to as an applicant has to file a trademark on each class required in the United States. Each class for trademarks has separate fees which should be settled. An applicant can protect a trademark on all 45 classes. Every trademark is registered on a specific list of goods (products or services). While there is no limitation on the number of classes or the underlying goods chosen, however each good chosen should be supported by some form of use to maintain the trademark.
What are the documents required for trademark protection in United States?
- Application form
- Applicant's address and identity proof copies
- Business details
- Letter of power of attorney (if filed through an attorney)
- Proposed trademark's digital version
- Copy of the applicant's passport (if an individual)
- Specimen of how the trademark is used in commerce
Refer to our templates and forms to download the templates or start the process and the documents will be automatically downloaded and filled in for your completion!
Are international trademarks available in United States?
An international application can designate the United States of America. If you want to register your trademark internationally and target specific countries, you can designate the USA through an international application, country code US.
National Vs International trademark in United States?
USA can be designated as part of an international application, however as the USPTO criteria and threshold for classification, and use is high, there is a high percentage of international applications which receive an office action on the basis that the goods are too broad and/or that the trademark is confusingly similar to a previously registered mark.
Local tips for trademark registration in United States
- Even if trademarks are spelled differently but sound alike, then the trademark office will consider them phonetic equivalents and may, therefore, refuse the trademark application.
- The trademarks can look and sound completely different; however, if the trademarks have the same meaning in the same or different languages, then this is sufficient for the trademark office in the United States to reject the trademark on the grounds of being confusingly similar.
- Marks with non-English words require translation in order to be registered.
Service level guarantee for trademark registration in United States
Trademark registration helps you protect your intellectual property. While we have no control over decisions issued by the USPTO, our data set and technology use historical decisions to ensure a smoother application process. We cannot guarantee you will not receive an office action, but with our proprietary system owned by Easy Trademarks we guarantee the level of service you will receive.