Building A Brand: The U.S. Trademark Clearance And Approval Process

Building A Brand: The U.S. Trademark Clearance And Approval Process

Trademarks are a vital element of any brand’s identity. They are a protection for the brand’s identity and reputation. But what does it take to register a trademark successfully? How can you guarantee your application will be approved? This article dives into these important questions that every business owner, social media influencer, and brand builder needs to know, notably:

  • How long a trademark clearance search takes (and why you absolutely need one).
  • Two key reasons trademark applications get rejected and how to avoid them.
  • What you need to do after your trademark is approved.

What Is Trademark Registration? Do I Need To Register My Trademark?

The purpose of trademark registration is to protect your brand and its identity. It also adds value to your company and puts the public and competitors on notice that you own the rights to this brand.

This is what trademark law is intended for, not only to prevent consumer confusion, as the laws are often worded to suggest, but also from a protection standpoint. Trademarks make sure competitors are not trying to mislead the public about the source of the goods or services they provide.

Trademark laws are typically worded with regard to the source of goods, which is the main factor in trademark law. Indeed, the law considers it harmful to be misled into giving money to one company thinking that you are buying one brand’s product when it is really someone else’s.

What Is A Trademark Clearance Search And Why Is It Important?

Trademarks protect a brand’s identity, but only if they are the first to get it. If someone else has an identical or similar brand name or logo and is selling the same or similar services or goods, their trademark would invalidate yours.

That is why it is so important to verify what other trademarks exist that might interfere with yours before applying, or you risk wasting precious time and money. This search, when properly conducted by an experienced attorney, ensures no other similar trademarks exist in your space or an overlapping sector, including translations in other languages!

How Long Does The Trademark Clearance Search Take?

Typically, a clearance report can be completed within two to three days, assuming you have paid your attorney and supplied them with all the necessary Information.

Can I Just Use An Internet Search For Trademark Clearance?

The internet is a great way to search for similar-sounding business names, and you should certainly do so when working on your brand. Here are some great places to start looking:

  • A U.S. Patent and Trademark Office free search
  • A basic internet search with Google
  • Social media searches
  • And more…

All of these are free, but none of them are sufficient. There is, however, expensive trademark-specific software for thorough clearance searches, which goes further and is needed to be certain your trademark is not taken already. This software searches for phonetic alternatives as well as identical or similar trademarks in overlapping and related industries.

What Is The Next Step In Creating And Protecting My Trademark After Business And Legal Due Diligence Is Done?

With the help of your attorney, you will supply all the necessary information about your brand and the products or services you have been selling under it. This can even include products or services you do not yet provide but have a solid plan to sell under that trademark in the future if you get it.

Your attorney will draft the full application, which you will review, and choose the appropriate United States Patent and Trademark Office (USPTO) classes for, as well as whether you wish to apply for just the word trademark or the design of your logo. You can do both, but that requires two separate applications.

Once the application is ready, your attorney will file it, and you will pay them the appropriate fees. Then, since it has been thoroughly and carefully prepared, it should be approved. If you did not use an attorney or do your full due diligence, you might very well end up getting rejected.

What Is The Most Common Reason A Trademark Gets Rejected?

If the USPTO finds a problem with your application, they block it with an office action. If you have done a trademark clearance search and filed the application based on a low-risk result soon after, the chances of this should be low.

Timing, however, is important. One business owner, for example, waited almost three months between the clearance report and deciding to file the application. In that time, the day before they filed, another international entity filed for a very similar-sounding name. Obviously, this could not have shown up on the clearance search.

As a result, they got an office action, an unpleasant surprise for everyone. Needless to say, they were incredibly upset, especially since it could have been avoided by just filing immediately. While there are office actions that can be filed to try and win that trademark over, there is no guarantee of winning that fight, whereas, with the right timing, your chances go up considerably.

In such cases, where two names are confusingly similar and they are both in the same industry, you receive a 2D rejection. Named after section 2D of the Trademark Act. This is probably the most common substantive rejection that you will get.

Are There Other Reasons Trademarks Do Not Get Approved By The USPTO?

2D rejections are far from the only reasons why trademarks get rejected. There are a host of others, such as the text being too descriptive. Such a mark’s text, if it is descriptive of the type of good and service, might get rejected outright, and none of it will be accepted.

In that case, typically, the USPTO will not give you the trademark on the principal register. Instead, you can apply for the supplemental register. The supplemental register has fewer protections, but you still get to put the Ⓡ on your brand if you register on the supplemental register.

You do not, however, get the benefit of prima facie proof of trademark registration like you would on the principal register. On the supplemental register, you still have to go through the steps of proving an infringement matter, proving the elements of your valid trademark. Whereas registration on the principal register is already evidence that you have a valid and enforceable trademark.

What Happens If Another Company Or Brand Objects To My Trademark?

If the application is approved, it goes onto a period called the publication period and then is published in the official Gazette for 30 days. This is called the Opposition Period. During this 30-day period, any party that wishes to oppose your mark from registering must file a notice of opposition and initiate opposition proceedings.

Doing so moves your proceedings to the Trademark Trial and Appeal Board (TTAB). This pauses the application process until the opposition is resolved. This, unfortunately, could take two or more years since it is like litigation.

Do Companies Often Object To Other Trademarks?

Typically, objections will not come as a surprise if you have done a trademark clearance search because you will know if there are parties with similar marks out there in your industry. However, there are some rare moments where a party is very aggressive with their trademark policing.

They may file oppositions against any mark that even remotely looks like theirs, even if they are not confusingly similar. This behavior is sometimes known as trademark bullying, and it does, unfortunately, happen.

These large companies can afford to hire the best law firms to police their marks very aggressively. These firms get paid to file oppositions no matter what, while small business owners cannot afford the defense costs to fight them. As a result, many brands and business owners will abandon the application process at this stage because they do not have the funds.

What Happens If There Is No Opposition To My Trademark?

Ultimately, however, it is much more common to have no opposition. Especially when you have done your due diligence or worked with a skilled attorney.

When the 30-day publication period is over, and there has been no opposition, your mark will proceed to registration, and you will obtain your registration certificate within 10 to 12 weeks. Once you get your notice of registration, you will also receive your registration certificate (usually a PDF these days, but you can order the original for a fee if you want to have it framed).

Now, finally, you can start putting the Ⓡ symbol for a registered trademark on your name and/or logo. If you registered the word, you can place the mark on the words you registered anywhere it appears, from your website to your packaging.

If you have a design mark registration, have your graphic designer add Ⓡ on the top right or the bottom right corner of your logo, wherever it looks good. Now, everyone can see that your logo is also a registered trademark. Most importantly, you can fight anyone who tries to   your hard-won brand identity and market reputation.

To take the First Steps To Establishing And Defending Your Trademark, book your free consultation with an experienced trademark attorney today. Get the information and legal services you need by calling (214) 307 9868 today.

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