File a Trademark

File a trademark application as an individual or company to protect a word, symbol, phrase, or design associated with your company’s product or service from creative theft and to grow your brand. There are specific steps for filing a trademark with the United States Patent and Trademark Office (USPTO).

Definition of Trademark

A trademark is defined as a unique word, phrase, symbol, design, or other device used by a business or person to characterize its products or services from those of other companies. In essence, trademarks are brands, and a person can protect his or her trademark or brand by obtaining the related trademark rights to allow a person to prevent others from using a confusingly similar trademark or brand. Registering a trademark is a must; it is done with the appropriate government body to safeguard against infringement.

What Types of Applications May Be Filed?

The United States Patent and Trademark Office, also known as USPTO, accepts the applications for registering standard marks, as well as nontraditional, non-visual, collective, and certification marks. The USPTO may accept each of these types of applications from an individual or company:

  • Word Mark

    • Standard character drawings

    • Free of design element or stylized letters and numbers

    • Letters and words in the mark depicted in Latin characters

    • Numbers in the mark shown as Roman or Arabic numerals

    • Typical punctuation or diacritical marks

    • No design element included and letters or numbers aren’t stylized

  • Design Mark

    • Stylized words or design (or both)

    • Requires .jpg format

    • Requires resolution of 300 to 350 dots per inch, length of 250 to 944 pixels

    • Clean, crisp lines

    • Solid rather than fine or overcrowded

    • High-quality design when copied

  • Color Mark

    • Provide substantial proof of distinctiveness

    • Visual

    • Show in color drawings

    • Color claim and location statement that shows

      • A color claim naming generic color(s) in the mark

      • Separate declaration describing where colors appear and their use in the mark

      • How they are used in the mark

  • 3D Mark

    • Describe the mark as 3D

    • Drawing showing a single rendition of the mark in three dimensions

  • 3D Mark

    • Submit an audio file in electronic format

      • .wmv, .wav, .wma, .mp3, .mpg, or .avi format

    • Within 5 MB for size

    • Detailed description of sound, which includes lyrics or words

  • Scent/Flavor Mark

    • Provide proof of uniqueness along with written statement of scent or flavor

    • Submit example that contains scent or flavor

  • Touch Mark

    • Graphical representation is necessary

  • Motion Mark

    • If motion is a feature of the mark, then you must provide a drawing depicting a single point in the movement or as many as 5 freeze frames showing different movement points (whoever best shows its commercial representation)

    • Motion is defined as a short and repetitive duration of movement

If it is a Collective Membership Mark, then the mark must be sued by the members of the group or organization. A Certification Mark is filed when a name, symbol, word, or device (or a combination of them) is used by a person who is not its owner. This certifies its origin, material, quality, accuracy, manufacture, or another feature of this person’s goods or services, or that the work on the goods or services was performed by those in an organization, such as a union.

What is the Basis for Filing a Trademark Application?

Filing a trademark application is a use-based type of application, as per the Lanham Act, Section 1(a). The federal law for trademarks is codified by 15 U.S. Code § 1051(a), which is the Application for Use of Trademark. File it if the applicant is using the mark in U.S. commerce when the application gets filed.

Another basis for filing is an intent-to-use application, as per the Lanham Act’s Section 1(b), 15 U.S. Code § 1051(b). File this if the applicant wants to use the mark in the U.S. at some future time, but the mark won’t get registered until the applicant shows its use. An additional basis to file a trademark application is an application under the Lanham Act’s Section 44, 15 U.S. Code § 1126, which a foreign applicant can file who has an honest intent to use the mark in commerce and has applied to register or already has registered the mark in this applicant’s home country.

The last basis for application is under Section 66 (Lanham Act), 15 U.S. Code § 1141f, and you file it via the Madrid Protocol. It is filed using an extension of protection from an International Registration with the WIPO, rather than directly from the USPTO. WIPO stands for World Intellectual Property Organization.

How to File a Trademark

  • Step 1: Evaluation

    • Do you or your company require a trademark?

    • Assess the definition of a trademark

  • Step 2: Determine the geographic range of protection necessary

  • Step 3: Assess existing marks

    • Is your mark confusingly similar to an existing one?

    • Compare your mark to registered marks or those pending application by using USPTO’s TESS (Trademark Electronic Search System) database

    • Keyword search online and via your state’s trademark system for similar marks and related goods and services to ensure your mark is not confusingly similar to existing marks not registered federally

    • Any similarity found by the USPTO will result in denial of your mark application under the reasoning a consumer would mistakenly think your mark, and the existing one come from the same source

      • For example, avoid a name that sounds like Apple or Appel, as well as avoiding a look-alike situation of a blue apple or blue peach, etc.

By selecting a strong mark, you reduce the chance of a third party using it without authorization. Fanciful and arbitrary marks, for example, are creative and unique, so others are less likely to use them. Plus, these types of mark are more likely to be registered than descriptive marks. An example of a fanciful mark would be a made-up name for a product or service, such as VINAGNA for travel services, while an arbitrary mark example would be a known word used for an unrelated product or service, such as PEACH for golf clubs.

You might also want to file a trademark that is categorized as a suggestive mark. This type of mark suggests features or connections to goods or services without coming right out and describing them. This is a strong type of mark with a good opportunity for application approval. An example is DAY-by-DAY for a calendar.

There is also a “descriptive” mark, which is a word or design that blatantly describes the item or service. An example is a picture of a granola bar for a granola bar company. This type of mark is not often registrable though unless the applicant gets distinctiveness through its extensive use for at least 5 years. As for a ”generic” mark, it is typically not registrable or enforceable against third parties; an example is LAMPS for lamps.

Before you register or file a trademark, follow these additional tips to improve your chances of approval by the PTO:

  • Include your surname or full name or likeness

  • Do not be offensive

  • Include a geographical description of the item or service

  • Do not use a translated foreign word that is generic or descriptive

  • Avoid book or movie titles already used

  • Avoid available marks for registration that are difficult to spell, remember or pronounce

  • Use a mark that fits with your company goals and values

  • Ensure your mark doesn’t translate into something offensive in a different language

  • Identify the goods and services related to the mark that the individual or company will offer consumers

  • Always sign the application as the individual or company in charge

The simplest way to file a trademark application is online via the USPTO’s Trademark Electronic Application System or TEAS. You will have to submit the trademark owner’s identity, whether it be a person or a company, and the owner does not have to be a citizen of the United States. The applicant’s name and address must be given, which the PTO uses for all communications. Thus, ensure that this person named is dependable.

Also necessary during the application process is a submitted depiction of the mark. This drawing of the mark can be either:

  • Standard character

    • Drawing of only an image

    • No words or letters

  • Special form

    • Stylized version

    • Can include special letters, logo, colors, or design

Be sure also to state in the application whether you, whether as an individual or company, are either using the mark currently in your company and the mark is in use already, or if you intend to use the mark at some point later in time. In essence, the two scenarios are “use-in-commerce” or “intent-to-use.” For “use-in-commerce,” you must provide a specimen or image of the good or service that shows the mark in use, such as a tin of coffee that has the mark on it.

While filing a trademark with the PTO is not a necessity, this type of registration does afford many benefits, including:

  • Establishes the legal presumption of ownership if a legal infringement case later occurs

    • Easier to prove ownership of the trademark if you claim injury from someone using it without your permission

  • Provides public notice of rights (individual or company)

  • As the trademark owner, you can record the mark with the US Customers and Border Protection Service

    • Stop anyone’s attempts to import infringing goods

  • Enables your usage of the ® symbol on your items or services

  • Can bring an infringement case to court as the owner, whether a person or company

  • Ability to apply for trademark protection overseas

Following registration, the applicant must pay associated fees. The TEAS application currently costs $325 per class of products or services. If you as the applying individual or company choose instead to submit a TEAS Plus application for $275, you must agree to send and receive all correspondence with PTO electronically and select from a pre-filled list of goods and services. Be aware before beginning the process to file a trademark that all PTO application fees are not refundable, regardless of whether the PTO accepts or denies your application.

If you oly plan to sell the goods or services within a particular state, and you have no plans to expand to another area, then the applicant probably only need register the trademark with the particular state. If, however, you plan to sell the item or service across the nation or perhaps even in other countries, register the trademark with the federal government and relevant foreign countries too. Often state registration is faster and cheaper than PTO registration, although registering with the state alone does not enable you to use ® on your goods or services. This is because ® is the federal registration mark.

Close to 100 countries use the Madrid System for international trademark registration, and the U.S. is one of them. The Madrid System makes registration easier as it is a central system that requires only a single application in one language to protect your trademark in all countries chosen by the applicant. There is a single set of accompanying fees for this process.

For international registration, apply to the PTO, who then sends it to the WIPO. Next, the WIPO assesses the application of the person or company, records the application the International Register, and then submits the paper to the applicant’s requested geographic areas for approval. This process takes about 12-18 months.

If approved, the registration lasts 10 years in each country, at which point renewal is available for another 10 years. Not all countries, however, use the Madrid System. For example, Canada is not a member. So, if you want to file a trademark there, you need to apply to the Canadian trademark office.

For PTO applicants, you must check whether your application to file a trademark is accepted or not via the Trademark Status and Document Retrieval (TSDR) system. The process takes about 3-4 months. Check your status by using the serial number given to you when you applied. The PTO examiner’s approval or denial of your application will show there.

If you see on the TSDR system a document titled Office Action, then there is an issue with the application. A common reason is a confusion with a mark that already exists. You then have six months to respond to the Office Action document or your application is deemed abandoned.

If your application is approved, on the other hand, then the mark is published in the PTO’s weekly Official Gazette online. The public has 30 days of the online publication of your mark in the Gazette to object to it by filing an opposition action with the Trademark Trial and Appeal Board. If this happens, seek a trademark lawyer. If there are no objections or if you win an opposition action then the applicant receives a registration certification for a “use-in-commerce” mark or a foreign registered mark within 11 weeks of the mark’s publication in the Official Gazette.

If there are no objections or the applicant wins an “intent-to-use” mark, the applicant then receives a Notice of Allowance 8 weeks after the Gazette’s publication. Within 6 months you must file a Statement of Use with the PTO or ask for an extra 6 months for filing. Once the Statement of Use receives PTO approval, the applicant receies the registration certificate.

To keep your trademark valid, follow maintenance procedures required by the PTO. For example:

  • You must file a Declaration of Use and/or Excusable Nonuse with the USPTO in the fifth or sixth year of the mark registration

    • Your mark is cancelled if you do not do so

  • File a renewal application before the 10 year registration ends

    • Not doing so results in mark cancellation

A trademark attorney can help you as an individual or company to choose a successful mark by performing proper searches and guide you through the complex application process to file a trademark. The professional can also provide enforcement-related advice and explain maintenance deadlines. Find an attorney who is well-versed in the USPTO once you post your legal need within our UpCounsel Marketplace. The lawyers have graduated from elite schools, such as Harvard Law and Yale Law, and they have over a decade of experience, on average, working for highly successful companies, including Google.