Trademarks - How to Obtain a TrademarkStartup Law ResourcesIntellectual Property
A federal trademark is a symbol, word, or words legally registered or established by use as representing a company or product within the United States. 10 min read
Understanding how to obtain a trademark requires an understanding of what a trademark is and its purpose. A federal trademark is a symbol, word, or words legally registered or established by use as representing a company or product within the United States.
A Guide to Federal Trademarks and How to Obtain One
Learn more about a federal trademark, who it's for, the requirements and process for obtaining a trademark online.
What is a Trademark?
In the United States, a symbol or words that a person or business legally registers to represent their company or product is considered a federal trademark.
When people refer to a trademark they are often referring to a federal trademark versus a state trademark. The following task list will allow you to obtain a trademark electronically using the United States Patent and Trademark Office (“USPTO”) electronic filing application. This task list will also walk you through several things to consider before filing your online application.
Filing a trademark application with the USPTO begins a legal proceeding; most applicants hire an attorney to represent them in the application process and provide legal advice before, during, and after the process. UpCounsel's attorney network includes many experienced trademark attorneys who are willing to assist you with your application.
The Process of Obtaining a Trademark
1. Conduct a trademark search for similar trademarks, goods, or services
Prior to picking the name for your company, and especially before you file a trademark for the name, you will want to do a trademark search to make sure there is not a trademark for a similar name in a similar industry.
You should look for trademarked names similar to the one you are thinking about using and in an industry that you plan to operate in. Industries are indicated by an industry code (1-45). If there is a trademark for a similar name in the same industry as you would operate in (or you do something similar), then you may want to pick another name.
Not sure what industry you would operate in? Do a trademark search for your major competitors and see what industries they have their trademark's registered in.
2. Determine the mark format
There are three type of mark formats:
- Standard format - Used for the basic word, words or numbers of the mark. For example, one of Google's first trademarks was for the standard format mark "GOOGLE" without the green, yellow, blue and red we know so well. For your first trademark, this is the most standard mark format because it is much broader. For example, if you have a standard mark format for "MyNewCo," you will be able to prevent someone from using a stylized "MyNewCo" in your industry. You can always apply for more trademarks as your company grows.
- Stylized/Design format - Appropriate for marks with a particular design element that you wish to protect.
- Sound marks - Used for sounds which identify the source of a good. An example is the NBC chimes.
3. Determine the goods and services industry for your mark
The goods and services industry class is a class number under which you will register your trademark. This is based on the industry that most closely matches your company's. Every class number that you register your trademark under is essentially like filing a new trademark (i.e. you will have to pay twice).
You can find the list of classes, including descriptions, on the United States Patent and Trademark Office website. Find the class that best suits your products or services. The best way to get an idea of the right class number for your trademark is to look at the class numbers of known competitors and see what they have registered under.
4. Determine the goods and service description for your mark
Once you have determined the goods and service class number for your trademark, then you must determine the correct description of the trademark. This description is intended to describe all of the products or services that you wish to be covered by the product. While you should be broad with the description, it should not be too broad or else the USPTO will ask you to rewrite it (which may be months after you filed the trademark). Rewriting is not terrible, just inconvenient.
You can find the descriptions of your competitors for similar class numbers and work from those. The USPTO website also provides canned descriptions when you file online that you can just copy and paste; it is cheaper to go this route and there is no chance of a rewrite.
5. Trademark online application
After determining the availability of your trademark name, the class number, and description, you can begin the process of filing an online application. This in itself is a multi-step process. You may want to consider hiring an experienced trademark attorney to assist you. UpCounsel can help you connect with one in your area and within your budget.
Preliminary Considerations to Consider Before Starting the Application Process
It is important to have clearly in mind:
- The mark you want to register.
- The goods and/or services in connection with what you wish to register the mark.
- Whether you will be filing the application based on actual existing use of the mark or an intention to use the mark in the future.
This will make your search of the USPTO database more useful and may simplify the application process. The United States Patent and Trademark Office website provides basic information about this step.
Search for Your Mark and Similar Marks on the USPTO's Online Database
Before submitting your application, you should perform a search of the trademark name database provided by the USPTO. Performing a search of this database will help you determine if your desired trademark has already registered or if your mark is confusingly similar to a previously registered mark. Using the Trademark Electronic Search System (TESS) is relatively easy, and will prevent you from wasting your time and money attempting to register a trademark that is not available.
The benefit of searching with TESS is that you will be able to find both inactive and active registered trademarks, as well as pending applications. It's important to discover this information so that you'll be prepared for the USPTO trademark examination process.
You should remember that not every trademark owner chooses to register their trademark. Simply by using a mark, however, you are granted some rights. Just because a trademark is not registered with the USPTO, it doesn't mean you are free and clear to use the mark. You should consider hiring a trademark attorney to help you find common law trademarks and marks registered at the state level instead of the federal level.
The reason you need to perform a trademark search is so that you can avoid something called likelihood of confusion. Basically, likelihood of confusion means that you are attempting to register a trademark that is very similar to another mark, and that customers would be likely to confuse the two. If the USPTO determines likelihood of confusion exists, your mark will be rejected.
If you find a registered trademark similar or identical to your own, and decide to file your application anyway, you should be aware that the USPTO will not refund your processing fee if your application is rejected. You can check the USPTO website for tips for effectively searching TESS.
Identify the Proper Basis for Filing a Trademark Application
If you have already used your mark in commerce, you may file under the "use in commerce" basis. If you have not yet used your mark, but intend to use it in the future, you must file under the "intent to use" basis. This means you have a genuine intent to use the mark in commerce; that is, you have more than just an idea, but are less than market ready (for example, having a business plan, creating sample products, or performing other initial business activities).
Filing your Application Online
The Trademark Electronic Application System (TEAS) is an online filing system that allows you to fill out an application form, check it for completeness, and then submit the application directly to the USPTO over the Internet. You must decide which version of the form to file, namely, either a TEAS Plus application or a regular TEAS application. The United States Patent and Trademark Office website has a 22-step TEAS tutorial.
The TEAS Plus form has a lower filing fee of $275 per class of goods and/or services but has much stricter requirements than the standard TEAS form. If you use TEAS Plus, you may only submit forms online and must already know the correct specification of goods for your mark. You must use the regular TEAS form, which has a filing fee of $325 per class of goods and/or services, if you cannot satisfy the TEAS Plus requirements. Before accessing the electronic application form, you can preview the pages to see what information will be required before starting the process.
If you have already formed the company that the mark will relate to, then you should put the company down as the owner of the mark. If you have not yet formed the company, then you can put yourself down as the owner of the mark and assign it to the company when you form the company.
Trademark Filing Fees
The filing fee for your application will be based on the following:
- Number of Marks: Only one mark may be filed per application. If you have multiple marks, then they require separate applications, each with its own filing fee.
- Number of Classes: You must pay for each class of goods and/or services in the application. For example, if the application is for one mark, but the mark is used on goods in two different classes, such as computer software in Class 9 and t-shirts in Class 25, then a filing fee for two classes is required before the application can be approved.
- The version of the form being used: See above. The application filing fee for the TEAS Plus version of the form is $275 per class of goods and/or services, but with stricter requirements, while regular TEAS is $325 per class.
More information on trademark fees can be found on the United States Patent and Trademark Office website.
Remember, registration is not automatic and requires legal review by an examining attorney in the USPTO's trademark review office. Also, be aware that the filing fee is a processing fee that the USPTO will not refund, even if you ultimately do not receive a registration for your mark.
As you have already read, the process of obtaining a federal trademark can be tricky and expensive. It is highly recommended that you consult with an experienced trademark attorney to help you through this process. UpCounsel can help you connect with trademark attorneys in your area and within your budget.
Choosing the Strongest Mark Possible
One of the most important parts of obtaining a trademark is making sure that you are designing the strongest mark possible. Selecting a strong mark accomplishes several goals. First, a strong trademark will be more likely to receive approval from the USPTO, which requires registered trademarks to be distinct and original. Second, and perhaps most importantly, it is much easier to prevent unauthorized use of a strong trademark than it is a poorly designed or generic mark.
There are a few basic categories of trademarks, some of which are strong and others that are weak. Here are the trademark categories, listed from weakest to strongest:
- Generic: The weakest type of trademarks are generic marks. These cannot be registered and are virtually impossible to enforce. For example, if you sell a brand of soda, and you brand your product with just the word “Soda,” this would be considered a generic mark.
- Descriptive: A descriptive mark is a trademark that uses a word, picture, or phrase to describe a product. If your company produces snack cakes, and you use a picture of a snack cake as your company's trademark, this would be a descriptive mark. In general, descriptive trademarks cannot be registered. The exception is if you have used your trademark for commercial purposes for five or more years and it has gained distinctiveness.
- Suggestive: A suggestive trademark is used to indicate the quality of your product without actually describing your product. An example of this would be marking a calendar Day-by-Day.
- Arbitrary: Arbitrary trademarks use words with a known meaning that is unrelated to the product you are providing. Apple computers, for example, are marked with a picture of an apple, which has nothing to do with computing.
- Fanciful: Fanciful trademarks use words that have no meaning outside of the trademark. These are the strongest type of trademarks, and they will provide you with the strongest rights.
When you've finished designing your trademark, you should consider into which of these categories your mark will fall. If your mark is fanciful or arbitrary, you should be able to complete registration with the USPTO without any difficulty. On the other hand, if your mark is generic or descriptive, you may need to go back to the drawing board and design a stronger mark to be sure you get your registration approved.
In addition to designing a strong mark, you must be certain that your trademark meets certain USPTO trademark requirements. The USPTO will reject trademarks with certain characteristics:
- A person's likeness or their name.
- Offensive language.
- A description of your product's geographic origin.
- A foreign word with a generic definition.
- The title of a movie or book.
Registering your Trademark at the State Level
In some cases, you may decide that you don't need to register your trademark federally with the USPTO. You should, however, still register your trademark in the state where you intend to use your mark. When you register your trademark at the state level, you will only be able to protect your rights in the state where your mark is registered.
The benefit of state registration is that the process is much quicker and more affordable than completing the USPTO registration process. You should be aware that if you choose state registration, you are not allowed to use the registered trademark symbol, ®.
International Trademark Registration
The Madrid System allows for international registration of trademarks. The United States, as well as 95 other countries, have adopted this trademark registration system. With the Madrid System, you can fill out a single application in your native language, and you will receive trademark protections in the countries of your choice.
If you want to register your trademark under the Madrid System, you will need to file your application with the USPTO. Once you have completed and submitted your application, the USPTO will transmit your application to the World Intellectual Property Organization (WIPO). After the WIPO has received your application, they will review your form and then document your application in the International Register. Next, your application will be sent to the countries where you are requesting trademark protections. Generally, you will receive approval within 12 to 18 months.
If your application has been approved, your trademark will be protected in your requested countries for 10 years. Once this 10-year period is up, you can renew your protections for an additional 10 years.
You should be aware that some notable countries have not adopted the Madrid System. Canada, for example, is not a member-nation of the Madrid System. If you want your trademark to be registered in Canada, you need to complete an application with the country's trademark office.
Need help with registering a trademark? Post a job on UpCounsel and Connect with Quality Trademark Attorneys who can help you with properly registering a trademark today.