A business puts a lot of time and effort creating their brand, and a trademark is a significant part of that strategy. Mistakes are often made in the trademark registration process, however, and those mistakes can lead to delays, denials, and disappointments.
At Huynh and Huynh, our intellectual property attorney will review your intellectual property, including trademarks, and advise you on all the steps you need to take to protect your work and your business. We handle the paperwork, the research, and more to make sure our clients' expectations are exceeded and their businesses benefit because of it. Contact us at 713-622-1111 to schedule a consultation and learn more.
Understanding Trademarks
Trademarks are one of the most common and critical ways to grow a business and build a solid, loyal customer-base. The United States Patent and Trademark Office (USPTO) defines a trademark as
any word, phrase, symbol, design, or a combination of these things that identifies your goods and services. It's how customers recognize you in the marketplace and distinguish you from your competitors.
In order to be trademarked, the word, phrase, symbol, or design must be distinctive. It cannot be generic and must not be similar to a trademark that is already in use.
A trademark does not have to be registered. However, registration provides more extensive rights and protections to the owner. For example, if a small business begins to grow outside of a specific geographic area, trademark registration can provide nationwide rights and protection.
The Process to Register a Trademark in Texas
There are several steps that must be taken timely and properly to register a trademark. A person or entity must apply for it. Once the application is submitted, it is examined. If approved, the trademark is published. Upon publication, the trademark is officially registered and protected. Each case may vary to some extent, but generally, the below steps are a part of this process.
Trademark Identification and Filing Basis
The process to register a trademark is relatively straightforward. It is important, however, to ensure that the application you submit is thorough and meets the requirements.
Your trademark must be distinctive. Researching the USPTO website, though daunting, can help you discover whether there is another trademark that is like, or similar to, the trademark you wish to register. Aside from ensuring its uniqueness, you must also:
- Identify if your trademark is a design mark, character mark, or sound mark; and
- Determine the types of services and goods to which it will apply.
The USPTO ID Master List will help you determine acceptable identification of services and goods – these services and goods are also referred to as trademark classes. It cannot be stressed enough how important it is to describe in full detail the trademark classes to which your trademark will apply because your trademark will only apply to these specific products or services and nothing else. For example, if you only apply to use the trademark for cosmetics, you cannot use it for soaps, unless you apply for the latter as well.
Next, you must determine the correct “filing basis” for your trademark. The requirements which must be met to proceed to registration depends on the chosen filing basis. There are four possible bases.
- Use In Commerce Basis: used when your mark is currently being used in commerce with your services and/or goods
- Intent-To-Use Basis: your intention is to use your mark with your services and/or goods in the near future
- Foreign Registration Basis: you already own a foreign registration of the same mark for the same services and/or goods in your country of origin
- Foreign Application Basis: also known as the foreign priority basis, this basis is used when you already own an application that was filed in a foreign country that was filed within six months of your application in the United States for the same mark and the same services and/or goods.
Our intellectual property attorney at Huynh and Huynh is well-versed in this step and can thoroughly and comprehensively make the necessary identifications and determinations, saving you time and money.
Trademark Application and Approval
Once you have identified your trademark and filing basis, it is time to file the application. Our firm will complete your application and file on your behalf.
Examination Period
After submission of the application, it's a waiting game for approval. In this post-Covid time, our firm has experienced anywhere from 6 months to 8 months for examination.
Approval Status and Opposition Period
Once approved or denied, you will be notified by letter. Approved applications are published in the “Trademark Official Gazette.” This newsletter is issued by the USPTO, and gives anyone that believes they may be harmed by the registration of your trademark 30 days to oppose it by filing a Notice of Opposition.
Notice of Allowance and Registration
If there is no opposition to your trademark, your trademark will likely be registered within the next 3-4 months if it has a commerce filing basis.
However, if your application is based on intent to use the trademark in commerce, your trademark will not yet be registered, but you will receive a Notice of Allowance. This notice will tell you when you must submit a Statement of Use and a specimen of how your trademark is being used in commerce. Then, upon acceptance of your Statement of Use, your trademark will be registered.
Trademark Registration FAQ
Questions swirl around the trademark registration process because it can be extensive and confusing. Here, common questions often asked by first-time clients are answered so that you can be informed and make smart decisions for your business.
How Long Does the Registration Process Take?
The time it takes to register a trademark varies. Typically, however, the process takes 12 to 18 months. Once the application is submitted, it takes roughly 4 to 6 months alone to review it.
What is the Biggest Reason Leading to Denied Trademark Applications?
The top reason trademark applications are denied is this: they are too similar to an already-existing, registered trademark. The risk of confusion between the two trademarks means yours gets denied because the other one is already registered. Making sure to conduct a complete search is critical to a smooth process.
How Can I Make a Trademark Strong?
Strong trademarks are those that do not use merely descriptive or generic words. Descriptive words like creamy, smooth, or bold are not distinctive enough. Generic words like hotel, laundry services, or tee-shirt business are not distinctive enough.
Strong trademarks are those that include fanciful, arbitrary, or suggestive trademarks:
- Fanciful trademarks are those with made-up words, like Pepsi® and Exxon®
- Arbitrary trademarks are those with actual words with no association of the goods or services, like Apple®
- Suggestive trademarks are those with words suggesting the quality of the goods or services but do not state the actual good or service, like Coppertone® for suntan oil
An intellectual property lawyer can help you get creative and ensure your trademark is a strong one. This allows you to avoid a denied application and improve branding strategies.
Do I Need a Lawyer to Register my Trademark?
Foreign-domiciled trademark applicants and registrants must be represented by a United States licensed attorney. This is not required for trademark applicants and registrants domiciled in the United States. It is required that all applicants maintain a current domicile address in all trademark filings.
Even when it is not required that an applicant be represented by an attorney, the benefits of legal representation can not be understated. Our intellectual property attorney in Texas, at a minimum, will prepare accurate applications and timely respond to legal inquiries from the USPTO.
Contact a Trademark Registration Lawyer in Houston Today
Trademark registration offers protection, but you must submit a thorough, comprehensive, adequately supported application. At Huynh and Huynh, our trademark attorney in Texas will work with you every step of the way. Contact us today to schedule a consultation either by filling out the online form or calling us at 713-622-1111.