not legal advice...
Trademarks Unplugged
So, you’ve finally decided to protect your brand by applying for a trademark? I’m sure you have plenty of questions, right? For instance, what are the fees that come with it, or how long will it take before you hear any news? Don’t worry! By the end of this read, your questions will be answered.
The Trademark Timeline
The trademark journey begins with the filing of a trademark application. After your application is submitted to the United States Patent and Trademark Office (USPTO), there is an estimated six-month period until a Trademark Examiner is assigned. After an Examiner is assigned, it takes about a
month for them to review your application to ensure compliance with the filing requirements.
If the mark is approved, the application is published for opposition. Oppositions are filed by anyone who believes your trademark may hurt their business. There is a 30-day period to oppose the registration of your mark. The mark will move towards registration if no oppositions are filed or issues are resolved.
If the mark is not approved initially, it is because the USPTO has issued an office action. Office Actions must receive a response within three months, but you can request an extension for an additional three months for a fee. The examiner will review the response and respond within one to two months.
The timeline can vary, with some marks being registeredwithin months, while others may take longer, depending on legal challenges. It is a journey that requires great attention to detail, responsiveness, and an understanding of the legal intricacies surrounding trademark protection.
Filing Your Trademark Application
When you begin the application process, you will be askedwhat type of trademark application you want to file. The two filing options include TEAS Plus and TEAS Standard applications.
A TEAS Plusapplication has a filing fee of $250 per class. This filing should be used if
you can complete the TEAS Plus application and select a class of goods/services that accurately describes your goods/services from the Trademark ID manual. When filing a TEAS Plus application, reviewing the additionalstatements that may be required when you file your application is essential.
If you do not meet the TEAS Plus requirements, you will becharged an additional $100 fee per class, and your application will be converted to a TEAS Standard application. A TEAS Standard application has a filing fee of $350 per class. This filing option should be used if you cannot complete all the required fields in the TEAS Plus application or select a class of goods/service from the Trademark ID manual that accurately describes your goods/service.
If your goods/services are listed in the Trademark IDmanual, and you can supply the required information, the TEAS Plus application would be a more cost-effective option. If you want more flexibility when describing your goods/service, then TEAS Standard would be a better fit.
Deciding between the TEAS Plus and TEAS Standards depends onyour specific needs. It is important to carefully review the requirements
before making a decision.
Responding to Office Actions
Congratulations! You have filed your trademark application,but in the midst of your excitement, you received an office action from the USPTO. An office is an official statement from the USPTO where an examining attorney addresses any issues found with your trademark or the application. It is crucial that these issues be fixed because without doing so, your application will be considered abandoned.
After receiving the office action, you generally have threemonths to respond from the date the office action is issued. However, obtaining a three-month extension for an additional fee of $125 is possible. The request for an extension must be filed before you file your response. If the deadline is not met, your application will be abandoned.
Maintaining Your Mark
After your mark has been registered, some things must bedone to keep your trademark active. Of course, it is important to continue to use your mark in commerce, but you also must file a required maintenance document declaring that you are still using your mark in commerce. During the
following time periods, you must file the following documents:
- Between the 5th and 6th years after registration, you must file a Declaration of Use and/or Excusable Nonuse under section 8, with a filing fee of $225 per class.
- Between the 9th and 10th years after registration, you must file the first Declaration of Use and/or
Nonuse and an Application for renewal under sections 8 and 9, with a filing fee
of $525 per class. - Every ten years after the fillings between the 9th and 10th, you must file a subsequent Declarations of Use and/or Excusable Nonuse and an Application for Renewal under sections 8 and 9, with a
filing fee of $525 per class.
There is a six-month grace period following the deadlines,but you must pay an additional fee per class. Your trademark will be canceled if you do not file before the grace period ends.
So, there you have it, the trademark journey in a nutshell. When you file a trademark, the most important thing is to remember the fees and deadlines accompanying it. As you embark on this journey, remember that securing your registration may be challenging. It is vital that you don’t let
these complexities overwhelm you. If you find the steps to be a bit too challenging, consider reaching out to OMI Legal LLC for reliable expert assistance.
Written by Kearra Richardson