How to Get Things Trademarked: Everything You Need to Know
Learning how to get things trademarked involves searching and filing for a trademark, establishing the intent to use and completing the opposition period.4 min read
2. File for the Trademark Via TEAS
3. Completing the Intent to Use Form
4. Waiting for Approval
Learning how to get things trademarked involves:
- A thorough clearance search.
- Filing a trademark on the United States Patent & Trademark Office's (USPTO) Trademark Electronic Application Site (TEAS).
- Establishing intent to use.
- Waiting for the processing and opposition periods to be completed.
Performing the Clearance Search
The clearance search is the first and maybe the most important step in getting a piece of intellectual property trademarked.
- If you don't already have a brand name lined up, spend some time brainstorming this topic.
- Perform a knock-out search to drop any possibilities that are clearly too weak or in conflict.
- Complete a search of the USPTO database.
- Use Google other search engines to look for conflicts.
- Consult search engines based in Europe and other relevant countries to look for any international conflicts.
- In some cases, you need to look for different classes of goods. You want to be sure you're looking at goods and services similar to those you offer. You want to cull out things that are similar in name only, like Delta Airlines and Delta Faucets.
The search for conflicts and clearances is complex. Deciding whether a conflict exists is not always black and white. For those reasons, you may want to hire someone to do this search for you.
File for the Trademark Via TEAS
Once the clearance search is complete, you're ready to file the trademark with the USPTO's TEAS. The site gives you options for filing different kinds of applications. One of the possibilities is the TEAS Plus form. This is the cheapest way to register a trademark.
The TEAS system has four requirements that users must follow.
- Communication must happen through email.
- All filings must be completed online.
- Users must choose the descriptions for their goods and services from a preset catalog.
- The full amount of the filing fee must be paid up front.
Once all of these requirements are completed, the waiting begins.
Completing the Intent to Use Form
To trademark a piece of work, you must be clear about whether it is already in use or if you have a legitimate intent to use it. Form 1B is the Intent to Use application, which lets you reserve your rights while you continue to develop your products or services. This can keep someone from swooping in and claiming your mark during the interim period before your rights are established.
When completing the form, you want to describe your goods and services in broad terms without straying too far from the actual or intended use. Just like with the clearance search, this is not an exact science and can be achieved in different ways. One way is to find a similar trademark application, possibly even one from a competitor, and see how they handled the description section. You may be able to modify it to fit your project, changing only the areas in which you differ.
Waiting for Approval
Before you embark on this process, you should know that it may look easy at the outset, but it is actually rather complicated. The wait for approval is also long. Your application won't be assigned to an examiner for at least two to three months. The initial review takes a few days, and if you have nothing that you need to address further, the application is posted and opened for opposition within a few weeks. The public can review the application, and anyone who wishes to oppose it can do so within 30 days of the posting.
However, the process can be delayed if the initial review finds areas that you need to address. Some common examples are problems with how the forms are completed, how the product or service is described, errors in the proof of use specimen, or conflicts discovered by the examiner. You will have to change your application to address those issues and then resubmit.
Some of these issues are substantial, and you may have to make legal arguments to push your application forward. In those cases, you should retain an attorney to handle the process to protect your rights and give you the best shot at the results you want.
At the end of the 30 days, if no one opposes your application, it is approved for registration. Even after approval, you may still have to wait several weeks to months to receive the registration certificate. While the whole process can take from nine to 12 months, your rights are protected from the date of first use in commerce, or on the date of the application if you filed an intent to use form.
If you need help learning how to get things trademarked, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. 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.