What is Trademark Filing?
Trademark filing is the process by which a lawyer will work with a client to register a trademark with the appropriate Government agency(s) to provide protection for specific words, phrase, symbols, designs, or a combination of them. The process involves conducting trademark searches, putting together a trademark application, and filing the trademark with the appropriate Government agency (USPTO, EUIPO, etc.) for examination.
Filing trademarks is important since it allows companies and individuals to protect their intellectual property which they have likely invested a lot of time and capital in creating. Many intellectual property lawyers specialize in filing trademarks for their clients and it is always recommended to consult and work with a professional to make sure your matter is handled effectively.
Steps Involved in a Trademark Filing
Interested parties may apply to seek registration of a trademark on their own. However, most of them prefer doing a trademark filing with an attorney’s help. Here are the steps associated with the process:
- Conduct a Trademark Clearance Search. It is also called a “knockout search.” The purpose of conducting this particular search is to determine whether the specific trademark is eligible for registration in the United States in the first place. This is because the USPTO will not approve a particular trademark application for a mark that may be similar to another mark. The second purpose of the same search is to determine whether the use of the specific mark may violate the rights of someone else using a similar mark.
- Complete the Trademark Application Form. The USPTO offers different registrations online through the Trademark Electronic Application System (TEAS). There are specifically two different filing options. So, organizations can often choose from TEAS Plus or TEAS Standard. TEAS Plus applications are cheap and account for around $250 per class. The price is very low compared to $350 for TEAS Standard. Many people prefer the TEAS Standard despite the cost because it offers more flexibility. Every trademark application requires the same basic information regardless of the chosen application.
- Submit the Completed Application. The trademark filing application is ready to submit once the individual or legal entity has completed the trademark application form. They must also have signed the declaration and paid the fee. The entity will then receive a serial number, which allows them to check on the status of their application. The USPTO will assign the application to an examining attorney for review. The process takes place approximately three months after the submission date. Sometimes, it may take as long as six months because the USPTO receives several applications.
Types of Trademark Filing Applications in the United States
The United States Patent and Trademark Office (USPTO) accepts applications for registration of different traditional, nontraditional, non-visual, collective, and certification marks. Meanwhile, the different types of applications that can be filed for trademarks in the United States.
- Word Mark: All letters and words in this particular mark are depicted in Latin characters. Several numbers in the word mark are depicted in Arabic or Roman numerals. The mark includes common punctuation and diacritical marks. It does not include a design element, and its letters or numbers are not stylized.
- Design Mark: JPG format is preferred for these kinds of mark images. The size begins with 5 MB or smaller. Moreover, the scanned image must be at a resolution of 300-350 dots per inch. Moreover, it must have a length and width of 250 and 944 pixels, respectively.
- Color Mark: The applicant must submit proof of acquired distinctiveness for this particular mark. Color marks should always be depicted in color drawings. A few of them may be accompanied by a color claim naming the colors, which is a feature of the mark. It also includes a separate statement describing where the color appears, and they are used in the mark. On the other hand, generic names of the same color should be used in the location and color claim statement.
- Shape Mark: The applicant must include a description of the mark. This indicates that the specific mark is three-dimensional. It also involves a drawing that presents a single rendition of the mark in the same dimensions.
- Sound Mark: The applicant must submit a specific audio file in electronic format that should not exceed 5 MB in size. It may be in .mp3, .mpg, .wav, .wmv, .wma, or .avi format. The applicant must further provide a detailed description of the sound, which may include words or lyrics.
- Flavor or Scent Mark: The applicant must submit substantial proof of acquired distinctiveness. For the unversed, it is a detailed written description of the scent or flavor. The mark is also a specimen that contains the flavor or scent that matches the required description.
- Motion Mark: The applicant may submit a drawing that often depicts a single point in the movement. It also shows up to five freeze frames showing different points in the movement. The same often conveys the most commercial impression of the mark. A specimen is often attached to the TEAS form in .wav, .mpg, .wmv, .wma, .mp3, or .avi format. Moreover, the audio files should never exceed 5 MB in size. Then comes the video files that should not exceed 30 MB. Meanwhile, the applicant must provide a detailed description of the motion.
- Collective Membership Mark: The members of a cooperative, an association, or any other collective group or organization can use this particular mark. The application must include a description of the nature of the specific membership organization. This may include the type, purpose, or area of activity of the particular members.
- Certification Mark: Any name, symbol, word, and device used by a particular person other than its owner to certify regional or other material, mode of manufacture, quality, origin, accuracy, or other characteristics. This may be related to the specific person’s goods or services. Moreover, the work or labor on the goods or services was performed by the particular members of a union or other organization.
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Requirements to Obtain a Trademark Filing Date
Here is a list of requirements that organizations require to obtain a trademark filing date in the United States:
- The name of the particular applicant
- The type of legal entity if the applicant is not an individual
- State or country of incorporation to validate citizenship
- The basis for trademark filing
- The name and address to which the USPTO should send the person’s correspondence
- A clear drawing of the mark for design and other nontraditional marks
- A listing of different goods and services that will be sold in connection with the mark
- The filing fee for at least a single class of goods and services
- An English translation or transliteration of any other non-English words in the mark
- Any kind of unpaid filing fees for all the additional classes
- A domestic representative for foreign applicants to receive service of notices or process
Key Terms for Trademark Filing
- Trademark Cancellation: A particular proceeding in which a specific party cancels the registration of any unique trademark. Most of the time, this unique design has already been registered.
- Certification Mark: A trademark registered for a particular organization for licensing it to different third parties as a sign of certification. It means that their specific product meets certain criteria for the trademark.
- Trademark Clearance: The process of researching and evaluating the legal viability and availability of a proposed trademark before registering it. It always helps avoid conflicts with existing trademarks and ensures the new trademark’s uniqueness and registrability.
- Collective Mark: A particular trademark registered by an organization for licensing it to its members. This is considered to be a sign of membership in that particular organization.
- Combination Mark: A combination of a figurative mark and a word mark. It may either be a text with a particular design or a combination of a logo and a logotype.
Final Thoughts on Trademark Filing
Trademark filing is important because it offers legal protection to individuals and entities. The application process also helps establish brand identity in the United States. It means that the particular trademark owners can enforce their respective rights against unauthorized use by other people. Most of these individuals and legal entities may not be aware of the considerations associated with the trademark filing process. That is why it is recommended to approach a lawyer to apply in the United States.
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