The Trademark Application Process
“In-Use” Trademark Application
File this application if you are already using your trademark with the sale of goods or services
Steps to Filing Your “In-Use” Trademark Application
1. Knock-out trademark search to ensure no one else already has a registered trademark that would be “confusingly similar” to your trademark.
2. Obtain the information required for the Trademark Application, including ownership, trademark, goods or services, and date of first use.
3. Have a Trademark Attorney file the Trademark Application.
4. When applicable, respond to any minor informalities from USPTO (no legal fee) or reply to an Office Action where the Trademark Examining Attorney has found a registered trademark that is “confusingly similar” to your Trademark. Legal fees will vary depending on the complexity of the refusal.
5. If the USPTO accepts the Trademark Application, it will be published in the Official Gazette allowing other trademark owners to oppose the registration of your mark.
6. If there is no Opposition to the Trademark Application, then the trademark will register. You will receive an e-certificate of your Trademark—a Presentation Copy from the USPTO for a fee of $25. (no legal fee).
7. Maintain trademark registration between the 5th and 6th year and the 9th and 10th year. Then every ten years thereafter.
Steps to Filing Your “Intent-To-Use” Trademark
File this type of application if you have yet to start using your trademark.
1. Knock-out trademark search to ensure no one else already has a registered trademark that would be “confusingly similar” to yours.
2. Obtain the information required for the Trademark Application, including ownership, trademark, goods or services, and date of first use.
3. Have a Trademark Attorney file the Trademark Application.
4. When applicable, respond to any minor informalities from USPTO (no legal fee) or respond to an Office Action where the Trademark Examining Attorney has found a registered trademark that is “confusingly similar” to your trademark. Legal fees will vary depending on the complexity of the refusal.
5. If the USPTO accepts the Trademark Application, it will be published in the Official Gazette allowing other trademark owners to oppose the registration of your mark.
6. If there is no Opposition to the Trademark Application, then USPTO will issue a Notice of Allowance. At that time, we must submit evidence that we are using the mark in connection with the goods and services. The USPTO fee is $100 per class of goods or services, and there is a legal fee.
For Goods - We will need to show the trademark on a product, and we will need to ship the goods across state lines (Canada counts) and the date of the sale.
For Services - A website depicting the trademark and offering the services is sufficient (A Facebook page will work), and the date the website was live.
7. The Trademark will register. You will receive an e-certificate of your Trademark. To order a Presentation Copy, the USPTO fee is $25 (no legal fee).
8. Maintain Trademark registration between the 5th and 6th year and the 9th and 10th year. Then every ten years thereafter.