What’s the Process for Getting my Brand Trademarked?

Shan A. Rajpoot via Unsplash

You’ve heard it before and you’ll hear it again—one of the most important things you can do is to trademark your brand. But…where do you start and how long does the process take?

In this post we’ll break down the trademark process from filing to registration.

Hire a Trademark Lawyer

We suggest hiring a lawyer specializing in trademarks. Intellectual property is a nuanced area of law and the trademark process can take up to two years. It’s something to trust an expert to handle. We suggest that all creatives, artists, and influencers file for a trademark to protect their brand.

Trademark Search

Before filing, a search is necessary to determine the likelihood that you will have success with your filing. Your lawyer will do sophisticated research in the Trademark Search Engine, the Trademark ID Manual, and the Trademark Status and Document Retrieval to determine the how to file.

There are many international classes that separate goods and services into distinct categories of similar things. For instance, international class 028 contains goods like sports equipment and games.

That is a large class with a large amount of goods, and a dedicated trademark attorney can properly research the most effective description of your goods or services. There will likely be multiple classes under which it would be proper to file.

Likelihood of Confusion

Once the classes are determined, then the trademark attorney will look for a “likelihood of confusion.” This involves complex boolean database searches to see if your word mark or design mark can be confused with that of another brand in commerce.

The goal here is to be unique.

If you were to have a logo with a white apple with a bite taken out of it, that would be a clear sign of a likelihood of confusion.

For words, complex boolean operators help the trademark attorney single out very specific word marks to see if there is anything sufficiently similar to lead to a confusion of your mark with another mark. This research is done in the Trademark search engine. Then, if the search yields results that are similar, the attorney will look through the other brands’ marks and see how they filed their trademark applications to see what pitfalls they might face in a similar application.

Mitigating Trademark Refusal

There are a number of grounds on which trademark examiners can refuse an application, but those refusals are public. Trademark attorneys can skillfully comb through those refusals to preempt any pitfalls that might face them down the road. The attorney can then file a response to those office actions responses and hopefully iron out the details to get you your trademark.

Related: 3 Reasons Influencers Should Have a Trademark

How long does it take to get a trademark?

Once you’re ready to file, the waiting begin. Getting a trademark is a process that can take up to two years. Here are the steps:

1. File the application

This involves filing for a type of mark in a specific class or classes, depending on how your mark will be used. After filing, the application will go into a queue to be assigned to an examiner and then reviewed.

2. Wait about a year.

The timing for how long it takes for an examiner to be assigned your application has been longer in the past few years. On average, it after about a year, you will hear from the Trademark Office. Yes, it’s a long process.

3. Respond to Office Actions, if necessary

There could be an Office Action that you need to respond to in order to address the concerns of the examiner. If you succeed in responding to the office action, then you will receive a notice of publication.

4. Notice of Publication

This means that your mark will be published for opposition for about a month.

During this period, someone with a registered mark could reach out to the Trademark office if they think that the registration of your mark could damage their mark. If nobody reaches out within the 1 month period of publishing for opposition, then the Trademark office will register your work in a few months after that opposition period.

5. Registered Trademark

Overall, you are looking at a period of time between 1 to 2 years before your mark is registered.

Could you do this on your own without any attorney? Sure! But considering the length and price of the trademark process, we recommend working alongside a trademark attorney who understands the nuances of intellectual property law.