A trademark is a protection of a good or service that is unique to your nonprofit. It can be a word, phrase, slogan, symbol, design, or combination thereof. Typically, businesses use trademarks to protect brand names and logos.
A proper trademark identifies your good or service and distinguishes it from other similar products. Strong trademarks are fanciful and arbitrary, as those tend to be the easiest to remember and will not likely be confused with competition.
Although your business is not required to register your trademark to be granted legal protection, it is always best practice to register with U.S. Patent and Trademark Office (“USPTO”) to ensure your legal rights.
Applying for Registration
Registering a trademark is a complex procedure with various stages:
- Due Diligence,
- Initial Filing,
- Office Action/Publication, and
- Registration.
The application process for trademarks typically lasts twelve to eighteen months.
Due Diligence
Before submitting an application, you should search for similar marks to the one which you are seeking to register. Every month, the USPTO releases an official publication called the Official Gazette which showcases newly filed marks for public objection. Another important search tool is the Trademark Electronic Search System on the USPTO website.
This system contains all marks registered with the USPTO. Nonprofits will need to perform due diligence on their mark to save money and time before filing a trademark application.
Initial Filing for the Trademark
To begin an application for a trademark, your nonprofit will need to choose a mark format, identify the goods/services to which the mark will apply, and determine your filing basis.
Your application must include a clear drawing or depiction of the trademark you want to register. The drawing must depict your mark as either a standard character or a special form mark.
Standard character marks grant protection to the mark itself, without regard to the size, font, style, color, etc. Special form marks grant protection to the mark in its stylized form.
There are two types of special form marks: stylized and design. Stylized marks are those that appear in a particular font or color. Design marks are those that are (or include) symbols/pictures.
It is critical that the application clearly and accurately identifies the goods/services to which the trademark will apply. The USPTO website offers a Trademark ID Manual to help identify what good/service you are providing for registration purposes.
Before filing, you will need to determine what your “basis” to file is. A filing basis is a statutory basis under the Trademark Act upon which you will file your mark. There are two main filing bases for trademarks: use in commerce under Section 1 and foreign registration under Section 44. Each further identifies two bases for registration:
Use in Commerce
- Use in commerce basis
- Used when your nonprofit is currently using the mark in commerce with your goods and/or services.
- Intent-to-use basis
- Used when your nonprofit has a bona fide intention to use your mark in commerce with your goods and/or services in the near future.
- 44. Foreign Registration
- Foreign registration basis
- Used when your nonprofit owns a foreign registration of the same mark for the same goods and/or services from your country of origin.
- Foreign application basis
- Used when your nonprofit owns an earlier-filed foreign application that was filed within six months of your U.S. application for the same mark and the same goods and/or services.
You must select the most accurate filing and registration bases when submitting your initial application for a trademark.
Office Action/Publication
When submitting an application, be sure to do it online through the USPTO’s Trademark Electronic Application System. Your nonprofit must set up a USPTO account in order to file an application. Once you submit the initial filing, the USPTO will assign an examining attorney to your case.
The examining attorney will review your application to determine if the minimum filing requirements have been met. The attorney review is comprehensive and may take several months to complete.
If the examining attorney determines that your trademark application has any deficiencies, the USPTO will send a letter explaining the material issues with your application. This letter is called an office action. Upon receipt of an office action, your nonprofit will have up to six months to make the necessary corrections and submit a response to the examining attorney.
If the examining attorney finds no deficiencies in your application, or if the attorney accepts your response to an office action, your mark will be approved for publication. Publication occurs when the USPTO publishes your mark in the Official Gazette.
Any party who believes it may be injured by your registration is given thirty days from publication to make an objection. If there is no objection within thirty days of publication, you will receive notice from the USPTO that your mark has moved on to the next step of registration.
It may take several months for the USPTO to notify you, so it is important you continue to monitor and perform due diligence on your trademark application.
Registration
The next step in this process depends on which filing basis was used in your application. If the mark is based on use in commerce or a foreign registration the USPTO will register the mark and send your nonprofit a certificate of registration.
If the mark is published based upon a bona fide intention to use the mark in commerce the USPTO will issue a notice of allowance permitting its use. You then have six months from the date of the notice of allowance to either use the mark in commerce and submit a statement of use or request a six-month extension of time to file a statement of use.
Your statement of use will be reviewed once again by an examining attorney to determine whether the use conforms to registration requirements. If your use does not conform to the requirements, the USPTO will issue an office action and your nonprofit will need to make corrections and submit a response. If the examining attorney determines that your use does conform to the requirements, the USPTO will issue a registration.
Maintaining your Trademark Registration
Once a mark is registered, you must continue to maintain its active status. To maintain active status your nonprofit must periodically file maintenance documents with the USPTO. Failure to maintain your active status may result in the cancellation or expiration of your registration.
Make sure to be aware that in the event your mark is canceled or expired, the only option is to begin the entire process again by submitting a new application.
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Conclusion
The trademark application process is long and often complex. You should be prepared and have a solid understanding of what you plan to register. Registration with the USPTO enhances your ability to enforce your legal rights and makes contests significantly easier and cheaper for your nonprofit. Remember to consult with an attorney to help guide you through the process or if you have any questions about if registration is right for your nonprofit.