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. 7 min read
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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?
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.
When people refer to a trademark they often refer to a federal trademark versus a state trademark. This 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 considerations to consider before filing your online application.
Filing a trademark application with the USPTO begins a legal proceeding, and 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 include many experienced trademark attorneys that 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 in what industries they have their trademark's registered.
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 trademark was for a 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. A good 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 which 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 for the trademark. This description is intended to describe all of the products or services that you wish 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 rewrite it (which may be months after you filed the trademark). Rewriting is not terrible, just a pain.
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: (1) the mark you want to register; (2) the goods and/or services in connection with which you wish to register the mark; and (3) 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
You should search the USPTO database before filing your application to determine whether anyone already claims trademark rights in a particular mark you want to protect through a federal registration.
Use the USPTO’s online database of Federally registered trademarks, the Trademark Electronic Search System (TESS), which provides an easy way to search for registered trademarks and pending applications.
TESS contains the records of active and inactive trademark registrations and applications, some of which can be used in the USPTO's examination of your application to be grounds for refusing to register your mark.
It is important to note that some trademark owners with valid and protected trademark rights do not choose to register their marks with the USPTO, so those marks will not be found in this database. You may therefore wish to consult a trademark attorney or professional trademark search firm for a more comprehensive search of, e.g., state registrations and common law marks.
The purpose of the search is to help determine whether a “likelihood of confusion” exists, i.e., whether any mark has already been registered or applied for at the USPTO that is the same or similar to your mark and used on related products or for related services. Note that the identical mark could be registered to different parties if the goods and/or services are in no way related.
If your search reveals another mark that would definitely "block" your application based on the above standard, please note that if you file anyway, the filing fee is a processing fee that the USPTO does not refund even if registration of your mark is refused. Tips on using TESS can be found on the United States Patent and Trademark Office website.
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 samples 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 and 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 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, having 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 your company that the mark will relate to then you should put the company down as the owner of the mark. If you have not 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:
(1) Number of Marks: Only one mark may be filed per application. If you have multiple marks, they require separate applications, each with its own filing fee;
(2) 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 could be approved; and
(3) 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 recommend 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.
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