January 20th, 2021
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January 20th, 2021
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Usually, the idea of registering a trademark is exciting. People generally take this step when they are at the start of a new venture - often when they are opening a new business. Sometimes, trademarks are registered when an existing business is launching a new product or new business model. No matter what the situation, however, registering a trademark can be really fun!
Once you've gotten the idea to register a trademark, the next step is figuring out how to actually do so. The process of registering a trademark remains shrouded in mystery for a lot of people, but actually, there are a few simple steps anyone can take when deciding on a trademark of their own.
In this guide, we'll walk you through all of the steps needed to register your trademark. But before we get started, please keep in mind this guide is not meant to constitute legal advice and instead should be taken as purely informational. Registering a trademark can be a complicated process, so it's not a bad idea to get legal advice specific to your situation from a licensed attorney in your state.
Before we get to the steps, however, let's discuss a few details about trademarks.
First, trademarks can be registered at the state or federal level, but generally, the registration most people want is federal registration, with the United States Patent and Trademark Office (USPTO). This is because federal registration provides the most protection for your mark. In order to federally register a trademark, however, you must be using or planning to use that mark in interstate commerce: in other words, you can't federally register a mark for a business that is exclusively in one state.
Next, trademarks can be registered with the USPTO on the basis of one of two types of applications: (1) intent-to-use and (2) use in commerce. Intent to use means that you plan to use that mark in commerce within six months of the application date. So if you haven't yet launched your business but want to protect your trademark, that's perfectly alright, but be sure to launch within the deadline. Use in commerce means you are already using the mark in interstate commerce. For this type of application, you'll have to provide the date you began using the mark.
And that's it! Now, without further ado, let's get to the details about how to register a trademark.
It may sound obvious, but the first step to registering a trademark is to decide on the specific mark you want to register. The reason this step is so important is because many people have a general idea of the mark they want, but a general idea won't cut it. You must have the exact mark that you want to register decided upon before you can begin this process.
A trademark can be one word, a phrase, an image, such as a logo, or even a sound! You can also register multiple trademarks for the same brand, such as a word mark representing the brand, a logo representing the brand, and a slogan.
While you are thinking about what to choose for your trademark, you may wish to do a simple Google search to see what businesses may already exist with the mark you had in mind. For example, if you find a large brand that is already using the exact trademark you wanted, you may wish to choose something else (more on searching your mark in the next step).
Once you've chosen your mark (or marks), you're ready to move on to do a search and clearance.
Final takeaway: Carefully select the specific trademark you want to register before you do anything else.
Although we previously mentioned doing a Google search to understand what existing businesses may be out there, it's now time to do a more detailed search of the government's database.
A search like this is done on the USPTO website. Their electronic search system is called "TESS," or "Trademark Electronic Search System."
For a beginning to searching trademarks, the best thing to do is to click "Basic Word Mark Search" and enter your proposed mark. The best outcome would be that you do not find any marks that are identical or similar to yours.
It is more than likely, however, that you will find some marks that could pose a problem for your mark. In this case, whether you should choose a different mark is highly fact-dependent, based on the marks that you find and the specific classes they are in compared to your mark (discussed more below). At this stage, it is best to find a licensed attorney to help you, as there may be very specific legal analyses required.
Hopefully, however, you've decided that you can move forward with your mark. If so, the next step is to decide on the class or classes of your trademark.
Final takeaway: Search the USPTO to make sure you are cleared for your desired mark. If the search gets too complicated or you are unsure about the possibility of using your mark, it may be time to engage a licensed attorney.
The next part of the process is to decide which class or classes you plan to register your mark in. Most people don't know that it is not possible to simply register an abstract mark. You must register a mark based on the classes of goods or services you plan to use the mark in.
There is a system of 45 classes, divided up into goods and services. For example, Class 025 is clothing, footwear, and headgear (goods). Class 041 is education, providing of training, entertainment, and sporting and cultural activities (services).
The specific class you choose is both a technical question and a legal question. In this regard, it may be helpful to have a licensed attorney assist you in deciding which class or classes are most appropriate for your trademark.
If you decide to choose your own class for your trademark, you may be limiting the protection you receive. The USPTO examiner will not likely correct your class for you (unless you submit a trademark specimen that does not match the class you have selected), so it is up to you to make the right decision for your mark.
Final takeaway: Selecting the proper class for your trademark is a very precise decision that may require the assistance of an attorney.
At this point, you're ready to draft and file the application.
Just like the trademark clearance search, drafting and filing the application can be done directly on the USPTO's website. There are two types of applications, the TEAS Plus and the TEAS Standard. The TEAS Plus is cheaper but has more specific requirements for filing.
In general, the application will contain the following:
- Your name and address (or your business name and address, if you are filing to make your business the owner of the mark)
- Information about your citizenship (or entity type and location for your business)
- Correspondence name and address, so the USPTO can communicate with you
- The trademark, whether it is a wordmark or design mark
- A description of the mark, if it is not a simple wordmark
- The class, including specific goods and services
- The date of first use in commerce, if the application is a use-based application
- A specimen of the mark, showing how it is being used, if the application is a use-based application
- A declaration that the application contains accurate information
- The filing fee
And that's it! The application is not as complicated as most people would imagine it to be, but you do need to make sure all of the information is truthful, and you need to ensure that the trademark class is correct.
Final takeaway: Draft and file your application, making sure it is accurate, and then pay the filing fee.
After the application is filed, now you're just in a bit of a waiting period.
If you've filed the application correctly, you may not receive any notice besides what's called a Notice of Publication, which means the mark will be published in the USPTO's Official Gazette for 30 days. After that 30 days, if no one opposed the mark and it is a use-based mark, the mark will proceed to registration. If it was an intent-to-use application, then instead you will receive a Notice of Allowance, which means that you must submit a Statement of Use (saying you are now using the mark) within six months.
This is the best-case scenario. Even as such, it can still take several months for you to hear from the USPTO again.
If, instead, the mark doesn't proceed without any issues, you may receive an Office Action, discussed further below.
Final takeaway: After the application is filed, all of you have to do is wait, and if desired, occasionally check the status of your application online.
If the trademark examiner for the USPTO finds any problems with your application, they may issue what is called an Office Action. An Office Action is basically just a notice from the USPTO that something in your application needs to be corrected or changed. You may also receive an Office Action that indicates your mark may be refused registration. You'll generally receive this office action to the email address you provided in the initial application.
Office Actions can run the gamut in terms of the possible issues present in a trademark application. The most common type of Office Action is one that indicates there is another mark that is very similar to your mark (called a "likelihood of confusion").
Once you receive an Office Action, depending on what type it is, you'll need to present arguments to the USPTO about why they should allow your mark to proceed to registration. In case of a likelihood of confusion, you'll need to establish why the marks cited are different from your mark.
If you do receive an Office Action, it's best to hire an attorney to help you respond to the USPTO. Office, the responses to these actions must be very precise and filled with legal arguments to convince the examiner to allow your mark to proceed. A licensed trademark attorney in your state will be the best person to do this.
Final takeaways: If you receive any Office Actions, carefully review them, and consider hiring an attorney to help you respond.
Hopefully at this point, you've either responded to all of the Office Actions received or not received any. Now, it's time to celebrate your registration!
The USPTO will send you a Certificate of Registration in the mail when the process is complete. They'll also put your mark in their official database, which means that when people go to the trademark search system on the USPTO website, they'll find your mark. This puts everyone on "notice" of your mark, which means that you'll have a stronger case against any potential infringers now that your mark is in the federal database.
Final takeaway: Celebrate obtaining your registration and keep your Certificate of Registration in a safe place.
Once you receive a trademark registration, your next responsibility will be to maintain your mark.
The USPTO requires certain filings between the 5th and 6th years after registration, between the 8th and 9th years after registration, and every 10 years after that. You may or may not receive reminders from the USPTO, so it is your duty to ensure that you calendar these dates and stay on top of your filings. If you do not, you risk losing the mark you worked so hard to register!
Final takeaway: Pay attention to your required filing dates and make sure you have them calendared to properly maintain your mark.
Filing a trademark application to register a mark can be a complicated process. Even in the best-case scenario, you will be dealing with the specifics of your application and ensuring that you have written all of the information accurately and truthfully.
It may be a good idea to hire a licensed attorney to help you with this process. If you do hire an attorney, this guide will have given you a comprehensive understanding of the process, so you can keep up-to-date with everything the attorney is doing with your application.
Registering your trademark is an important step for protecting your business in the long term.
About the Author: Anjali Nowakowski is a Legal Templates Programmer at Wonder.Legal and is based in the U.S.A.