Trademark Filing: Steps to Protect Your Brand

Federal trademark filing through the USPTO is generally preferred because it provides nationwide protection and creates a public record that deters others from adopting similar marks. Federal registration grants you the right to use the registered trademark symbol and allows you to enforce your rights in federal court. State trademark filing in New York, governed by the New York General Business Law § 218, provides protection only within state boundaries but may be appropriate for businesses operating exclusively within New York. Federal trademark filing typically costs between $250 and $350 per class of goods or services, while state filing fees vary. Many businesses pursue both federal and state trademark filing to ensure comprehensive protection of their intellectual property.

To qualify for trademark filing, your mark must be distinctive and capable of identifying the source of your goods or services. The mark cannot be merely descriptive, deceptive, or confusingly similar to existing registered marks. Trademark filing requires that you either currently use the mark in commerce or have a bona fide intent to use it in the near future. Generic terms that describe the product category cannot be registered through trademark filing. The USPTO examines all applications to ensure they meet these requirements before granting registration.

Before submitting your trademark filing application, conduct a thorough search using the USPTO's Trademark Electronic Search System (TESS) to identify any conflicting marks. Search for identical marks, phonetically similar marks, and visually similar marks within your industry. Consider consulting with an intellectual property attorney who can perform a comprehensive trademark filing search using specialized databases. A proper search during trademark filing preparation can save time and money by identifying potential conflicts before application submission. The USPTO will conduct its own examination during trademark filing review, but a preliminary search helps ensure your application's success.

Your trademark filing application must include the applicant's name and address, a clear description of the mark, a list of goods or services using the International Classification system, and the appropriate filing basis. The Trademark Electronic Application System (TEAS) allows you to submit your trademark filing application online through the USPTO website. When completing your trademark filing submission, ensure all information is accurate and complete, as errors can delay processing or result in rejection. You must pay the required filing fee for each class of goods or services covered by your trademark filing. After submission, the USPTO will assign your trademark filing application a serial number and begin the examination process.

An Office Action during trademark filing examination may require you to clarify the scope of goods or services, modify your mark's description, or address conflicts with existing marks. Common issues in trademark filing Office Actions include descriptiveness rejections, likelihood of confusion rejections, and technical deficiencies. You must respond to an Office Action within six months to avoid abandonment of your trademark filing application. trademark registration professionals can help interpret Office Actions and prepare appropriate responses during the trademark filing process. Failing to respond adequately to an Office Action will result in rejection of your trademark filing application.

If the examining attorney approves your trademark filing application, it is published in the Official Gazette for thirty days. During this opposition period, third parties may file an opposition to prevent your trademark filing from proceeding to registration. If no opposition is filed and your trademark filing was based on actual use in commerce, the USPTO will issue a Certificate of Registration. If your trademark filing was based on intent to use, you must file a Statement of Use before registration is granted. trademarks receive protection once the Certificate of Registration is issued, and you can then use the registered trademark symbol on your goods and services.

Once your trademark filing results in registration, you have the exclusive right to use the mark for the goods or services listed in your application. You can enforce your trademark filing rights by sending cease and desist letters to infringers and pursuing legal action if necessary. Monitoring the marketplace for unauthorized use of your trademark filing protected mark is essential to maintaining your rights. The Trademark Trial and Appeal Board handles disputes related to trademark filing registrations, including cancellation proceedings and opposition cases. Registering your mark through trademark filing strengthens your legal position and allows you to recover damages if someone infringes your protected brand.