One of the first steps when starting your business or building your brand is coming up with a business name, designing a logo and possibly even coming up with a slogan. You should also take steps to protect your genius name and logo, and make sure it doesn’t interfere with other trademarks (which could get you in quite a bit of legal trouble).
Here is the full process for registering your trademark. It’s rather complex, so be prepared to either hire an attorney, or spend some extra time being thorough.
Step 1: Get it Right
A trademark should be a sign, design, sound or expression that is representative of your brand, product or business. Be sure you’re not confusing it with a copyright or patent.
Step 2: Identify Your Mark
Determine which of the three mark formats applies to your trademark:
- standard character mark: any combination of words, letter or numbers, without consideration of the font or style (for example, the name of a business). Provides broad rights for use in any form of presentation.
- stylized/design mark: a mark with a design or appearance which you’d like to protect (i.e. a logo)—may have letters or not.
- sound mark: a tune or jingle that is representative of a brand, such as the MGM roaring lion sound (other popular examples)
Step 3: Attorney-worthy?
Do you need an attorney to help you in the process of researching, filing and protecting your trademarks? Technically, you don’t. But it might be a good idea for various reasons:
- While you can conduct a search for competing trademarks in the Trademark Electronic Search System (TESS) database, a trademark attorney can conduct a more expansive search that goes beyond the TESS and identify potential problems with your mark—and inform you whether you should apply at all.
- Filing for a trademark is a legal process in itself; it has legal requirements and deadlines, and if they are not met your money will not be refunded. It may be worth the flat fee many attorneys charge to file correctly the first time.
- If an Examining Attorney (representing the US Patent and Trademarks Office) sends you communication, you may need the assistance of an attorney to respond properly.
If you choose to hire an attorney, they can help you manage all of the pursuant steps on this list.
Step 4: Show ‘em the Goods
Your logo, name or jingle will represent a particular good or service, and you must select a legally acceptable identification for your goods and services. Doing this improperly may prevent the registration of your mark. Here are some tips for properly identifying your mark:
- Goods vs. services: do you sell goods (actual products, whether physical or digital), or provide services (provide form of assistance or consulting)?
- What are the goods or services you provide? Search the ID Manual here to find your product or service, by entering relevant keywords in the search box. Search under “Basic Fields” to find the appropriate ID for your service or good. If you do not find it, you will have a space to describe your product or service if you are applying with the TEAS Form (and not the TEAS Plus, see Step 7 for more info).
Still confused? Watch here for an in-depth video explaining the identification process (provided by USPTO).
Step 5: No Copycats
It’s time to check whether there are other companies, people or brands out there whose mark has a high “likelihood of confusion” with yours. It’s important to remember that it’s not just about searching for people with the same mark or name, but also uncovering those who are similar. If someone has already registered or applied for a mark that is the same or similar, and it’s used for related products or services, it may be grounds for turning down your application.
Searching the TESS database (click the “TESS” Icon under “Tools”) can be a little overwhelming at first.
The Basic Word Mark Search is fairly simple and allows you to search for business names and slogans (not designs).
The Structured Word and/or Design Mark Search allows you to search for both words and designs (using the Design Code Manual to find designs).
The Free Form search is a more advanced search based on Boolean logic and has several search fields—it is not advisable for beginners. For a more in-depth guide to searching marks check out the TESS Help Menu here.
Note that not everyone chooses to register their trademark with the USPTO, so not all relevant results will appear in TESS. However, it’s still important that you check for unregistered marks since the owners often retain the rights to them whether they’re registered or not (hiring an attorney may be extremely helpful in this regard).
Step 6: What’s Your Basis?
Before applying you should know your basis for filing the mark. There are two options, either use in commerce or intent to use; basically whether you have used the mark in sales and products already, or intend to use it (this means your product or service is essentially market-ready). “Use in commerce” must be established with an example in which the mark was used, and “intent to use” will require an additional form and fee.
Step 7: Actually File The Application!
You can finally begin filing your application through the Trademark Electronic Application (TEAS) System. You will begin by filing your initial application form here, and can choose between the TEAS Plus Form and the TEAS Form.
The TEAS Plus form has a lower filing fee ($275 per class of good/service), but it has stricter requirements than the basic TEAS form. You must:
- file a complete form
- select your goods and/or services from the list of ID Manual (described in Step 4—there is some room for customization, but not a “free-text” entry)
- pay full fees at the time of filing
- file later communications regarding the application through the TEAS
- receive all communications via email
The TEAS Form costs $325 per class of good/service, and is your option if you can’t satisfy the requirements of TEAS Plus. Here are the fee requirements and payment options.
When applying keep in mind that…
- the filing process may have a few strict deadlines
- your filing fee will not be refunded
- your data will become public once filed
Step 8: Sweet Success
The review process will take several months. If they do not have any objections to your registration, you will receive a notice of publication with the date of publication. After it is published, any party who feels they may be damaged by your mark will have 30 days to take action.
If no opposition is filed (or if it fails), you enter the next step of registration: a certificate of registration will be issued. Within about 11 weeks the USPTO should register the mark and issue you a registration certificate.
If you filed with an intent to use, you will receive a notice of allowance, and will have six months to begin using the mark in commerce, or will need to request a six-month extension.
Important: you must regularly file maintenance documents to keep the registration live.
Article by Rochelle Bailis