The process begins with an application. As previously stated, the application must describe the underlying goods and services. If the mark is currently used in commerce in connection with those goods/services, samples, or "specimens" of use in commerce should be provided in the initial application. The rules regarding appropriate specimens are complex and will not be addressed here.

The application is assigned to an examing attorney, who attempts to determine (a) whether the mark is registrable, (b) whether the description of goods and services is adequately clear and specific, and (c) whether registration of the mark would be likely to cause confusion with any other marks currently in existence. Often, several months after filing the initial application, the Trademark Office attorney assigned to examine the application will send a letter requesting additional information, suggested changes to the application and/or a list of reasons why the mark can not be registered as initially filed. Sometimes modifications to the description of goods/services are needed. Frequently, substantial research is required to determine what changes to the application would satisfy both the applicant's business needs and the Trademark Examiner's legal and/or factual concerns. A period of six months is permitted to respond to this letter.

If necessary, a second (final) letter may be sent to clarify any remaining issues. Upon satisfactory resolution of those issues, a set of specimens must be filed and reviewed, if not filed earlier. Following review and acceptance of the specimens, the application is "published for opposition". This review and comment period allows the public to raise reasonable objections to registration. On resolution of any issues that arise during that period, the mark will finally be registered.

The amount of time required from start to finish may vary. In the rare event that the Trademark Examiner requests no changes to the application and no public objections are made, an application may be registered in as few as 6-9 months. Generally, however, the process is much longer, as the Trademark Office frequently takes several months to process any materials submitted, and a 6 month response period is given for each request from the Trademark Office. It may be anticipated that most applications will require from 18-24 months to complete. In the event that significant opposition is raised by the Trademark Examiner or from the public, or if the applicant appeals a final refusal to register by the Trademark Examiner, the process may take far longer.

Actions on Registration

Once a mark has been registered, the owner's work is far from over. Following registration, the owner must continuously "police" the mark to prevent infringement and unauthorized use. Widespread use without authorization may cause a mark to lose its unique value and become subject to cancellation.

The owner should use the ["R"] symbol to put the public on notice of the owner's proprietary claim to the mark. The symbol need not be used every time the mark appears, but should be frequent enough (especially in a longer document or set of web pages) to alert a casual reader.

Immediately on discovering infringment, the owner should take written action to notify the infringer of the proprietariness of the mark and demand that the infringer cease use. Even if not immediately successful, this action will assist in building a case against the infringer.

Various services are available as well with whom a trademark owner can subscribe to help police a mark. These services will review public fora, including the Trademark Office's publication for opposition section, to locate potential infringers.

Summary

Trademark registration is a complex process. It can be quite expensive and lengthy. One trap that many clients inadvertently get into is to take the attitude of "let's file the application just in case". The reasoning is that the client is not absolutely certain of her plans, but would like to begin the process in order to "see what happens". Preparation of the application involves not-insignificant expenses, however. In many cases, clients incur expenses to file the initial application, only to realize when an action from the Trademark Examiner is received, that they must either spend additional money to respond or abandon the application. If the client believes that the mark could be valuable later, but has only limited funds for the business currently, the choice can be a difficult one. For that reason, we urge clients to carefully consider their business needs, available cash and the general competitive environment prior to filing an application. In some cases, it will be worthwhile to file early in order to stake a claim to a mark. In others, it may make far more sense to delay a filing until business plans have been finalized, a product is close to market, and/or sufficient cash will be available to pursue the application without causing other areas to suffer.

The trademark registration process is complex and nuanced, and this summary has covered only the highlights. We recommend that you consult an attorney prior to initiating the registration process, as the actions taken in the initial application may dictate the ultimate success or failure of the registration effort. For more information, or for assistance in reviewing agreements regarding covenants not to compete please contact one of the attorneys in our transactions group.

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