Can You Really “Register a Trademark” in Minutes?

If you listen to talk radio or watch TV, you may have heard ads for a service that assists in preparing wills, forming business entities, and registering trademarks. At least one version of this ad claims this service can “register a trademark in minutes.” As a trademark paralegal, I can tell you that the mechanics of applying for trademark registration has never been easier. Online filing is relatively simple, even without the help of a service like I’ve described above. But that’s not even the first step in the process of getting a mark registered. Successful prosecution of a federal trademark application to registration can take 12 to 18 months and requires a number of steps, any one of which can doom an application if not done properly. Once a mark is registered, additional steps are required to maintain that registration. Here are some of the questions that need to be asked before paying (and possibly wasting) the application fee.

Is it a trademark?

Simply stated, a trademark is a word, slogan, logo, design, color, sound, motion or even smell that associates specific goods with their source. A service mark likewise associates services with their source. But not every identifier qualifies as a trademark or service mark. Selecting a valid specimen of the mark as it is being used in commerce is an important part of this process.

Is it available?

Some people come up with what they think is a great mark for their product or service, only to find that someone else got the same or similar idea weeks, months, or even years before. Unlike searching for domain name availability, conducting an availability search for a mark is an art, not a science.

How do you respond to the examiner’s refusals?

If the examiner doesn’t believe your mark is registrable as filed, an Office Action is sent out, listing the grounds for refusal. Some refusals, such as requiring a disclaimer or providing a substitute specimen, can sometimes be easy to overcome. Many pro se applicants never make it past the first Office Action; they either give up, fail to meet the response deadline, or prepare a response that the examiner finds unacceptable.

What if your mark is opposed?

Once the examiner is satisfied that the mark is registrable, it’s published for opposition in the weekly Official Gazette. Even if the examiner is convinced your mark deserves to be registered, third parties may claim your mark infringes on theirs. An opposition action can spell the end of your journey if not properly defended.

Your mark is registered. Now what?

As long as a trademark or service mark is in continuous use in commerce, registrations can be maintained indefinitely. But to do so, affidavits must be periodically filed and fees paid. Many registrations of active marks are cancelled because no one bothered to calendar the necessary maintenance and renewal dates. Despite advertising to the contrary, registering a trademark is never as simple and immediate as filling out a form. Because application fees are almost never refundable, it pays to do it right the first time.

Contributed by Carl Mueller

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