Trademark Registration Is Not Easy And You're Going To Hate It (But It'll Be Worth It)

If you've paid attention to my blog recently, you may have noticed that I’ve been rearranging the layout on an almost weekly basis. I’m sorry for that. My art background makes me unreasonably picky about the way things look and when they’re not perfect it triggers a kind of unrepentant OCD in me. It’s hell. But if you HAVE been paying attention, you might have recognized two new additions: an updated logo and a new disclaimer at the bottom that reads “The [Legal] Artist® is a registered trademark.” Yes my blog now has the highest level of trademark protection that can be granted in this country, so suck it everyone!

I’ve written before about the benefits of trademark registration, but I’ve never actually outlined the process. Lately it seems like a large portion of my practice has been trademark work. I don’t know why and I’m not complaining, but the time seems right to clarify what the process looks like, so here’s a broad overview of how registration works.

  1. You  must file an application with the United States Patent and Trademark Office (USPTO). You can register three types of marks: 1) visual marks such as logos or illustrations, 2) audio marks, and 3) standard character marks - i.e. names, slogans, phrases, and titles.  When you register, you have to associate your mark with a class of good or service and for each class there’s a non-refundable filing fee of $225-325 (the difference in price depends on the method of your filing). This means that theoretically, your registration could cost as little as $225 for a single type of mark and one class, or several thousand dollars for several types of marks and several classes.  
  2. During the filing process, you have to state whether the mark is already in use in commerce. If it isn't, you have to specify when you intend to start using it. You’ll have to submit a visual specimen of your use of the mark even if you’re not applying to register the visual representation of it. For example, when I filed my application for The [Legal] Artist, I submitted a screenshot of my website, but other documents showing the mark's use in commerce will work too.                     
  3. Your application is then sent to a USPTO examining attorney who will check the application against existing trademarks to see if your mark infringes another one out there, or if it could lead to a likelihood of confusion in the marketplace because it is similar to existing marks. This process can take as little as three months, but I’ve seen it take upwards of six.                                   
  4. If there are any defects in the application, substantive or clerical, you will often be issued an "office action, which gives you the opportunity to correct them. If you can’t or won’t, your application will be considered abandoned and your registration will be denied. You have six months to correct any defects.                                                                                                              
  5. If the examining attorney finds that your mark does not infringe on another mark and if your application is without defect, the mark will be published in the Trademark Official Gazette.               
  6. During the publication phase, anyone who thinks they might be damaged by the registration of your mark may oppose the registration with the Trademark Trial and Appeals Board (TTAB). They have 30 days from the initial publication to contest the registration, but they can also apply for a time extension to properly assemble their argument.                                                                     
  7. Once the opposition is received by the TTAB, it will be reviewed. If the opposition fails, your mark moves forward to registration. If the opposition's argument is deemed to have merit, you will have to respond with an explanation of why your mark won’t harm the opposing party’s mark.                           
  8. If you successfully defend your mark (or no one opposes it), it will move forward to registration. If you do not successfully defend your mark, registration will fail. If your registration fails, you don’t get that money back. It’s a pretty hefty upfront investment.                                                                 
  9. Once your mark registers, you’ll have to maintain it in several ways. First you'll have to put the (R) registration symbol next to your mark. Failure to use it could result in a loss of trademark status. You also have to renew your mark after five years (for a price), and then every ten years as long as you want the mark to exist. Failure to do any of these things may result in the death of your mark.

Whew. Complicated, right? That’s by design. Unlike copyright registration, registering a trademark is supposed to be expensive and arduous because they don’t want just anyone doing it. A registered mark is a legitimate business asset, one that sets your business apart from all the others; it's where your goodwill starts and ends; it defines you in the public eye; it's not a trifle, it's a real and tangible part of your business. You have to think of registration as a capital investment… not that dissimilar from buying equipment, inventory, or office space. Most people aren’t prepared for the cost and time associated with filing a trademark application, and when I break down the actual process they wind up putting a pause on it.

What I laid out above are just the broad strokes too. It can actually get more convoluted. For example, when I submitted my application, I accidentally submitted the wrong specimen; I used an older version of the logo that had the squiggly brackets "{ }" instead of the traditional ones "[ ]" you see above. I received an office action and I had to alter my application to an “intent to use” status to allow time for a redesign even though I was already using the mark in commerce. This prolonged the application phase by three extra months and added another $100 to the tab.

My advice is this: if you want to register a name, logo, or anything else associated with your business, prepare yourself mentally for a long and expensive process. The result will be worth it, but it’s not something to take lightly.

Greg Kanaan

The [Legal] Artist, Boston, MA, USA