Step 1: Select a source indicator (mark) for your goods or services. Avoid merely descriptive, deceptively misdescriptive or geographically descriptive marks. (Unless it describes a region where the alcohol is made.)
Step 2: Conduct a trademark database search at the federal and state levels as well as an internet search for identical and similar sounding, looking or spelled trademarks. Look for anything that could be confusingly similar to a consumer.
Step 3: Evaluate the availability and likelihood of registration for the mark on the principal or supplemental register. Determine the number of classes sought and prepare a description of goods or services.
Step 4: Determine the type of form(s) of the mark you wish to register.
Step 5: Prepare and file the application and any companion applications as an actual use, intent to use, foreign priority or foreign registration basis along with any required specimens and the fee.
Step 6: Respond to Office Actions regarding rejections and objections.
Step 7: If the trademark was filed as an intent to use basis file an Amendment to Allege Use if possible.
Step 8: Trademark is accepted for publication and published in the trademark section of the Official Gazette for opposition.
Step 9: After 30 days have passed without opposition, marks filed as actual use basis get issued and placed on the Principal Register or the Supplemental Register. Marks filed as intent to use basis are given a Notice of Allowance and provided 6 months to file a specimen and a Statement of Use before issuance of the registration. (Additional 6 month extensions available) Once the Statement of Use is received the mark is granted registration and placed on the Supplemental Register or Principal Register.
Step 10: Between the 5th and 6th anniversary of the mark, file a §8 affidavit or declaration showing the mark is still in use and if the mark is on the Principal Register, file an optional §15 affidavit of incontestability to strengthen your legal rights.
Step 11: If mark has been on the Supplemental Register for 5 years file a new application seeking registration on the Principal Register claiming distinctiveness with a supporting affidavit to have the mark placed on the Principal Register. This will require another publication in the Official Gazette and 30 day opposition period.
Step 12: Renew the mark for another 10 years by filing an Application for Renewal
between 9 years 6 months and 10 years 3 months.
Mark S Hubert, P.C. • Patent, Trademark, and Copyright Law