Steps to Obtaining Federal Registration

In order to obtain federal trademark registration, you must meet the following requirements:

  1. Your mark exceeds the threshold of distinctiveness established by the USPTO.
  2. Your mark does not cause consumer confusion with previously registered or applied-for marks.
  3. You are using or intend to use your mark in Interstate Commerce.

As part of our CTR, we will advise you through the entire process beginning at Step 1.

Step 1: Select A Name (or analyze a name already being used).

We will work closely with you to ensure that your desired name meets the threshold of distinctiveness established by the USPTO. If your name is too descriptive for the types of goods or services provided, your application will be denied.

Step 2: Perform Comprehensive Search Analysis and Evaluation.

As discussed in The Importance of Trademark Registration, it is very important that you know what other uses are out there before you embark on a timely and costly journey to build your brand. We will order a nationwide search (and international, if applicable) of your name to determine if any prior uses could prohibit you from entering the market or obtaining a federal registration. The search examines United States Trademark Filings, state trademark filings, corporate and business records, manuscripts, and Internet databases. From these results, we will determine whether your mark will cause consumer confusion with other previously applied-for mark (in which case, you will be denied registration) and, in the event your mark will not cause consumer confusion, whether prior common law uses are so pervasive to limit the strength and reach of your mark in the marketplace.

Step 3: Identify Use or Intent-to-Use.

Once we establish that you have prevailed through Steps 1-2, we will then identify the type of trademark application you are currently qualified to file with the USPTO. The goal is to apply for registration as soon as possible – because, your rights begin from the date of filing and not the date of registration (usually 12-18 months after filing). To obtain a federal registration you must be using your mark in interstate commerce. But to file for federal registration, you merely need to have a bona-fide intent to use your mark in interstate commerce sometime in the near future. We will work with you to determine whether your current use qualifies for federal registration or whether we should proceed with an Intent-to-Use (ITU) application until the use of your mark qualifies for registration.

Step 4: Determine Class(es) & Draft Class Description.

A federal registration for a particular mark does not grant you a monopoly on that mark. Your protection is limited to the type of good or service your mark is providing to the public. Under U.S. Trademark Law, your application may be filed in one or more of the forty-five (45) individual classes established by the USPTO. This makes it possible for two separate businesses to own federal trademarks for the name Delta – one for an airline company and one for a faucet manufacturer; under two separate and distinct classes. We will work closely with you to determine the appropriate class or classes to file your application under – it is crucial to file your mark under every class you are currently using or intend to use it in (e.g. two classes for a record label that provides recording services (a service) and manufacturers compact discs (a good)).

Once we determine your class categories, we will begin drafting your application. The most important section of your trademark application is your class description. Your mark’s class description establishes your scope of rights. Draft it too narrowly, and your rights will be limited. Draft it too broadly, and the USPTO may deny your application. Your class description should be drafted by an attorney that has an in-depth understanding of your good or service.

Step 5: File Trademark Application.

With a strongly drafted class description, we will process your trademark application and begin tracking its status.

Step 6: Correspond with Trademark Examiner.

Once your trademark application is filed, we will monitor its status as it progresses through the trademark process. There may be a number of occasions when a Trademark Examiner seeks clarification or requests an amendment to your application. We will correspond directly with the Examiner to ensure that your mark continues through the application process. *Note: If we file an ITU application for you in the first instance, we will also file the additional application upon preliminary approval of your mark.