All you need to know for a trademark Registration-filing in United States of America

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. 

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

Absolute grounds encompass marks that are not distinctive or visually appealing. Deceptive or infringing marks will be automatically rejected.

Relative grounds

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.

-Confusion

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.

-Sound-alike:

A couple of examples of trademarks the US patent and trademark office found similar based on phonetic similarities are:

The USPTO implements strict deadlines when processing trademark applications. There are strict deadlines to ensure a trademark application is maintained: 

• Publishing a trademark in USA after a notice of allowance is issued - 30 days but can be extended by a third party with interest in opposing the mark 
• Responding to a trademark office action in the USA 90 (3 months) 
• Declaration of Use and/or Excusable Nonuse should be filed

-Between the fifth and sixth years after the registration

-Between the ninth and 10th years after the registration date 

• Application for Renewal should be filed between the 9th and 10th year after registration