Applying for a Trademark

Trademark Process - Flying BlindTo file a Trademark with the United States Patent and Trade Office, aka USPTO, you will first need to determine if you are branding a product, a service, or a process.  A Trademark is used for a product. A Servicemark is used for a service or process.   Additionally, you will need to identify which International Class you wish to file under, also known as an IC class. For example, iPod is a Trademark of Apple, Inc with an IC class of 025 for clothing and textile goods, yet an IC class of 009 for electronic and mechanical devices for handheld digital electronic devices for recording. [1]

The fun process begins with a visit to which is the official website of the US Patent and Trade office to confirm the term in question is not already a Registered Trademark. Each application receives a unique Serial number for tracking purposes.  You will need to have several pieces of information available to apply - name, address, IC class, Trademark or Servicemark, a definition of the items you are branding, a date which represents first use by you of the Trademark, a couple of .jpg files illustrating the mark in use, and of course a credit card to pay for the application fee. I strongly recommend starting with a 1A “current use” filing versus the 1B “intent to use” filing as a 1B is only a temporary filing and will need to be converted to a 1A filing before receiving an official Trademark Registration.

Trademark Process Summary

Step 1 - Filing - completing an application takes 2 hours, but then it takes 6-9 months for the USPTO Patent Attorney's to go through their backlog of thousands of applications to finally get to yours.

Step 2 – Patent Attorney Review - When initially filing an application, each application receives an Application Serial number (not to be confused with a Registration number - that comes later).  As mentioned earlier, there are hundreds of applications filed daily and it can take 6-9 months before your application is initially reviewed by a USPTO Patent Attorney.

Step 3 - Published for Opposition - after the initial 9 months of waiting for your application to be processed, your application may or may not be approved for publication. The Trademark is literally published on a national roster of newly applied for terms for others to challenge its authenticity. The Trademark will sit on this list for 3 months.  If you have been using a phrase in your advertising for years and it pops up on the Trademark Opposition Listing, this is your chance to BLOCK IT with an opposition claim.  If you don’t make that effort and Trademark passes the Opposition phase, you could receive a Cease and Desist letter later in life for using the Trademark in a commercial capacity.

Step 4 - Registered - if the Trademark does not receive opposition while listed during the Published for Opposition stage, then it receives a federal Registration number.  You will receive in the mail a nice certificate listing the Trademark and the Registration number with a gold foil sticker on it signed by a US Patent Attorney. Additionally, the Registration number is added along side of the original Application Serial number on the USPTO website for reference purposes.

Step 5 - Perpetual License - At the 8 year anniversary of your Trademark Registration, there is another form to complete for $300 that changes the license to a perpetual license (ongoing forever).