My Experience With the Trademark Process

After inventing a product and trademarking a brand name, Trademark my brand in EU many friends asked, How did you do it? Here is a primer on my experience with the process of filing a trademark.

It is one thing to invent a new product and file a patent for the purpose of licensing, but it is a far different matter to get it trademarked properly. To get the rights to your own brand name, it is necessary for you to file a trademark application.

In August 2002, my company had received a patent for a product (U. S. Patent No. 6, 752, 149 B2). Officially it was a breathing filter for wearing over a user’s nose and surrounding the user’s nostrils. If we were going to manufacture it, we had to find a name for it.

After filing for the trademark, we received a serial number (also known as an application number) from the US Trademark Office. Since the USPTO (U. S. Patent & Trademark Office) divides trademark applications into many different categories, the type of product (or service) that you apply for falls under an international Class Number for the particular category that you want. This number will show up on all your trademark paperwork as your application works its way through the lengthy process.

I describe this process as a “twisting, winding road. ” But it is well worth it. After all, there is everything in a name!

Many years ago the USPTO used to require that you have a product in commerce before filing a trademark application, i. e. the name had to appear on products already in the marketplace. Under that scenario, the application would include the question regarding the “date of first use. ”

There are several steps involved:

STEP ONE: File your application
The USPTO eventually added another way to apply for a trademark without the requirement for having the name in commerce prior to filing. This was deemed “intent to use”. This ‘intent to use’ application is the first step in a lengthy process to acquire trademark registration rights.

The advantage was that it enabled inventors to find out if a particular name was available before putting it into commerce, thereby lessening the chance of infringing on someone else’s name. This also made it possible to avoid the great cost involved with having to recall products bearing the infringing name and having to re-label them with a new one.

After all, doesn’t it make perfect sense that you have the rights to your desired name before you place it on manufactured products, brochures, advertising, etc.? Of course it does!

Once the intent to use application has been filed, it is the hands of the U. S. Trademark Examiner’s Office. Their job at this point is to examine their entire database to see if someone already has the same name (or to see if someone else has another name which is very similar). The main purpose of the Trademark Office’s role at this juncture is to prevent “marketplace confusion. ”

A fairly recent example of this had to with a beer maker using the name “Starbock. ” Though beer is a very different beverage from coffee, the trademark office ruled in favor of Starbucks after they filed opposition to the name “Starbock. ” Though the beer maker protested that they made beer, not coffee, the trademark office ruled that this was an obvious attempt to hitchhike onto someone else’s already popular name. The USPTO correctly assessed that Starbock could be confused with Starbucks; this type of confusion could lead consumers to believe that Starbucks was the maker of Starbock beer.

The beer maker would have been wise to file an intent to use application before locking horns with Starbucks. That would have saved them a lot of legal fees, as well as a great deal of time fighting a giant.

STEP TWO: Publication for possible opposition
If the Examiner’s Office informs you of their finding that your name does not conflict with anyone else’s name in their database, it then goes to the next stage… called publication.

Your entire application with serial number, etc. will be published in the U. S. Trademark Gazette. This is an online publication which comes out every month with a listing of all the new trademark applications. Your application would be published for thirty calendar days. This gives any and all U. S. trademark users the right to know about your name before it goes any further in the legal process. If anyone believes it is so similar to their name that it could do irreparable damage to their business, then that person or entity has the right to file opposition within the thirty day period. The same entity also has the right to file for an automatic thirty day extension while studying the possibility of opposition.

STEP THREE: Receive Notice of Allowance
However, if no opposition has been received when the thirty days have elapsed, you will receive communication from the USPTO that your trademark application has then been granted the official “Notice of Allowance. ” This means that all the products for which your application was filed have now become “allowed” under that name. Upon having the Notice of Allowance, you may actively pursue licensing and/or manufacturing of the product bearing the approved trademark name.

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