How to File a Trademark: Everything You Need to KnowTrademark Law ResourcesTypes of TrademarksHow To Register A Trademark
Trademarks help protect a symbol, logo, phrase, domain name, design, or word that's associated with your product or business name. 11 min read
What is a Trademark?
A trademark helps protect a symbol, logo, phrase, domain name, design, or word that's associated with your product or business name. A trademark is different from a patent because it doesn't protect an actual product or design on a product. The trademark prevents other companies from using your logo, design, phrase, symbol, domain name, or word as their own.
How Do I File a Trademark?
- Finalize the design
The first step in the process of trademarking is deciding on your idea. If you have several logos, symbols, or words, decide on the one you like best. You should keep the others as backups, in case your top choice isn't eligible for a trademark.
As you finalize your design, think about a few important aspects. Your idea won't qualify for a trademark if it's too generic. For example, if your business is called "The Computer Store," you don't have anything original that you can trademark. Computer isn't specific enough, so think about adding a name or other distinguishing feature.
Look at some of the best examples of recognizable trademarks. Most Americans would recognize Nike's swoosh logo without seeing the brand name. When shopping for soda, you can see the red, white, and blue Pepsi logo or the red and white Coca-Cola logo on the packaging. These trademarks help consumers recognize their favorite products.
Avoid using offensive language or design, a web extension (.com, .net, etc.), or names of people without their permission. You also can't patent a functional feature. Functional features are essential to the function of the service or product. For example, you can't trademark the steering wheel on a car. Without the steering wheel, the car wouldn't function properly.
- Review other trademarks
Before you waste time and money filing an application for a trademark, perform a search for existing trademarks. While some are very recognizable on a national scale, like the Mcdonald's Golden Arches logo, others are on a smaller scale. So you might not realize that another company already owns a trademark.
Look for logos, phrases, designs, words, symbols and domain names that might be similar to yours. Use the Trademark Electronic Search System (TESS) database to conduct a free search.
If you find one that is similar, use the registration or serial number on the listing to search the Trademark Status and Document Retrieval database. This will tell you if the trademark is still active. If so, you'll have to change yours enough so it's not as similar.
- Prepare your application
With a finalized design that isn't similar to other trademarked items, you can work on the application. More than 95 percent of these applications are online. Start by classifying your trademark by the Goods and Services classifications found in the Trademark Manual of Examining Procedure. There are 45 different classes so choose the option that best fits your item or business.
The application should also include the date you first used the mark in commerce. Your business can legally use a mark with the TM symbol as you begin the trademarking process. Just make sure to keep track of the first time you used it for your application.
For goods, the first use would be the first time you transported or sold goods that included the mark. For services, this date would be the first time you provided a service under the mark. You will also need to specify the date you used the mark in any form, along with the date you used the mark in U.S. commerce. It is okay if these dates are the same. It also doesn't have to be extremely specific; the USPTO may accept a year for the filing date.
There are no legal requirements or restrictions around using TM on your mark, unless it infringes on another trademark. If you're using a mark that does infringe, you will not win against someone that holds a registered trademark just because you use TM.
You can then submit your application online. The fee is between $275 and $325. You should have a response within six months of the filing date.
If you're not currently using the mark, you have two options. The first is to wait until you begin using it to file for a trademark. The second is to file for an intent-to-use trademark. If you choose the second option, mark "intent-to-use" on your application. It costs about $100 extra to file but can give you extra time to protect the mark before you start using it. You can also request extensions in six-month intervals. An extension fee on an intent-to-use trademark application is $150 each.
An approved intent-to-use trademark is not included in the USPTO Principal Register. Other businesses or people can't search for it. When you start using it, you'll need to file another form. That form will include the date you first used the mark. It will complete the process and finalize your trademark registration.
If you abandon your intent-to-use trademark application, you could lose your chance to own the mark at all. The loss of the mark ownership would occur if you don't follow through with the registration process, but someone else begins using a similar or even identical mark.
Why is Filing a Trademark Important?
Filing a trademark protects your intellectual property from theft. Intellectual property under a trademark includes a word, domain name, symbol, phrase, and design. A trademark helps customers identify a specific product or company, so it can help build brand loyalty.
If you don't file a trademark on your intellectual property, others can use it freely. Perhaps one of your competitors wants its products to look like yours. Without legal protection, companies can use any logo or phrase.
Worse, that company could file for a trademark before you do. It's difficult to prove who used a design, phrase, word, or symbol first. In this case, the USPTO tends to favor whoever submitted the application first.
Reasons to Consider Filing a Trademark
When you consider filing a trademark , look at the advantages. A trademark will protect your intellectual property and gives you legal rights against anyone else using it. The trademark allows your customers to quickly locate products and services from your business. Without a trademark, you run the risk of confusing consumers. You may also lose out on sales because another company is using a similar design to yours.
Filing a trademark on your products and services also helps maintain quality. If your business focuses on the quality of a product, consumers will associate that with your brand. When searching for high-quality items, they may lean toward those branded with your design. But without legal protection, a lesser-quality company could put a similar or identical logo on their products. This may lead to loss of trust in your company, confusion, and unhappy customers.
Reasons to Consider Not Filing a Trademark
Don't file a trademark application until you search what already exists. If something similar already has a trademark, you'll waste time and money. Search the USPTO website in the classification that matches your symbol, word, or phrase.
If your company or product name is generic, you don't need to bother filing a trademark. The USPTO doesn't approve applications for marks that don't include enough detail. For example, ingredient names, functions, purposes, features, or characteristics of a product aren't detailed enough. Choose a distinctive mark to improve the chances of approval.
Another reason to skip filing a trademark is if the mark won't be around for very long. For example, if you're producing an item for only a few months or even a few years, it's not worth the time or trouble to file. You can use the TM after your mark without filing any paperwork. The legal right to use TM falls under "common law rights" for using a mark when providing goods or services.
Some bigger companies or trademark owners will use watching services to keep an eye out for potential infringements, so filing your trademark application could prompt an objection. Because trademark applications are available to the public, it's easy for a big company that uses watching services to review applications that could cause confusion and object to them. So in a case like this one, it might be a better option to use the mark without legal protection instead of bringing it to the attention of someone else unnecessarily.
It's also important to note that applying for a trademark with the USPTO will only protect your mark on a national scale. If you plan to expand your business to offer goods or services outside the U.S., your trademark will have no jurisdiction in other countries.
For international trademark requests, submitters will need to go through the Madrid system, which is managed by the World Intellectual Property Organization (WIPO). As part of the United Nations, WIPO allows a business to file a single application for international protection.
When your company is adding to its product line, you may wonder if it's necessary to trademark a similar logo. One example of this is an apparel company that holds a trademark for its company name and one type of clothing, such as Joe's Jeans. If the company started selling shirts, it wouldn't be necessary to file for a trademark for Joe's Shirts. Another company using that name and a similar design would likely be infringing on the original trademark.
There is no firm deadline on filing for a trademark. But the longer you wait, the higher the risk of another person or business copying your idea. If you're selling your product with the mark, the risk is even higher since consumers and other companies can see it.
What Could Happen When You File a Trademark?
After submitting a trademark application, you may receive approval from the USPTO. If this happens, you can begin using the registered symbol on the mark. You also have legal protection if someone else tries to use it without your permission.
You can also use the approved trademark application as documentation if you're filing for a trademark in other countries.
The other outcome of filing is a denial of your application. The USPTO may deny it because your mark is too similar to something else that holds a trademark. A denial could also happen if the mark is generic. You can modify your design and submit a new application if your application doesn't go through.
What Could Happen When You Don't File a Trademark?
If you choose not to file a trademark, your logo, symbol, design, domain name, phrase, or word is available for public use. Anyone can put it on their advertising, products, or services without any legal risk.
One common mistake when filing for a trademark is not searching thoroughly by class. The TESS database includes 45 different classes for trademarks, so search carefully. You may want to look through several classes if your mark overlaps a couple of the options.
Another major mistake is waiting too long to file for a trademark. Any company or individual can use a non-trademarked logo, symbol, phrase, word, domain name, or design freely. You want to avoid confusion as much as possible. If your customers see your logo used elsewhere, they won't know which item is actually from your company.
Frequently Asked Questions
- What marks fall under trademark protection?
The USPTO recognizes traditional and non-traditional/non-visual marks for trademark protection. Categories include:
- Word mark, which must include accepted characters from the alphabet, numbers, or Roman/Arabic numerals
- Design mark, which may include characters and/or design elements
- Color mark, which protects the distinct colors used in the mark
- Shape mark, which applies to a three-dimensional shape
- Sound mark, which is an audio file (.wav, .wmv, .wma, .mp3, .mpg, or .avi)
- Scent or flavor mark, which is a distinctive flavor or smell. This requires extensive examples and proof of originality
- Touch mark, which you must represent graphically
- Motion mark, which includes designs that move
- Collective membership mark, used by members of a group
- Certification mark, which means that union members performed work or labor
- How long does it take to get a trademark?
Upon filing an application online, the USPTO should respond within six months. It may take up to a year if you file on paper. The filing process also takes longer if you forget to include required documents or images. If another trademark holder opposes your mark, this will extend the process as well.
You can track the process of your trademark on the USPTO website. Your application will appear on the site within 14 days of filing.
- When should I file for a trademark vs. a patent?
Filing for a trademark is the best option if you want to protect a design, phrase, word, logo, symbol, domain name, or other similar item. A patent protects the actual product or unique ornamental design of an item.
Another difference between patents and trademarks is the option to renew. The term of a USPTO-issued trademark is 10 years, while a utility patent lasts for 20 years. But upon completion of that 20-year term, the patent expires and the item under it becomes public property. A trademark has the option for renewal in 10-year increments. It's also easy to renew a trademark; you simply have to prove the use of the trademark by sending in a label, packaging, or other material that includes the mark.
The cost to renew your trademark is $100 per class of goods or services.
When you have a final version of your mark, you can begin filling out the USPTO application. Make sure to include all required forms and documents to avoid delays. You'll need to include proof that you legally own the rights to the mark as well.
In the last 10 years, the USPTO started allowing companies to use the Trademark Electronic Application System (TEAS) to file applications instantly online. The system is easy to use and became the preferred way for the USPTO to receive applications quickly and efficiently. To help encourage trademark applicants to use the online system, the cost is $50 less than if you file a paper application.
As you complete your application, you can use the help links under each section and field for assistance. These validation areas also prevent you from submitting an incomplete application. You'll also receive an email confirmation with a summary and serial number for your trademark submission, allowing you to track its process. If you need further help, you can call the helpline, available all day, every day, except starting at 11 p.m. on Saturday until 6 a.m. on Sunday.
With your application, you need to include your name (or the name of the mark owner, if it's not you), a current address, a listing of goods or services associated with the mark, a drawing of your mark, and the filing fee for one class of services or goods.
Other required information on a trademark application includes the type of legal entity, if you're filing under a business name, citizenship status, state or country of incorporation, a verified statement of ownership of the mark, and the basis for filing for trademark protection. If your mark includes anything other than standard characters, you'll also need to add a description of the mark. For foreign applicants, an English translation of non-English words is another requirement.
If you're filing under multiple classes, you'll need to submit fees for each one. You can pay with cash, check, or card, but fees are not refunded if your mark does not receive approval.
The cost per class of goods or services is $325. However, if you file form TEAS Plus, you will qualify for a $50 discount per class. The TEAS Plus form is more complicated and the approval requirements are strict.
Filing a trademark application is important to get legal protection on your original mark. Companies generally trademark their business names, if possible, and logos. With a trademark in place, your business can use the mark freely without worrying about theft or possible infringement.
If you need help with filing a trademark, you can post your question or concern on UpCounsel's marketplace. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.