How to Register a Trademark: Everything You Need to KnowStartup Law ResourcesIntellectual Property
Registering a trademark protects a phrase, logo, symbol, design, domain name, or other word, requires filing an application with the USPTO. 10 min read
2. Why Is it Important to Register a Trademark?
3. Reasons to Consider Not Registering a Trademark
4. Reasons to Consider Registering a Trademark
6. What Could Happen When You Register a Trademark?
7. What Could Happen When You Don't Register a Trademark?
8. Steps to File
How Do You Register a Trademark?
Registering a trademark, which protects a phrase, logo, symbol, design, domain name, or other word that is associated with your business, requires filing an application with the United States Patent and Trademark Office (USPTO). A trademark typically applies to a product, while a service mark typically refers to an available service. Using a service mark indicates that all services with that protected mark come from the same company or source. Before you file the application, you should perform a thorough search of existing registered trademarks and service marks to make sure that yours isn't too similar. You can use the Trademark Electronic Search System (TESS) database to look at other registered marks.
The cost to register a trademark online is between $275 and $325 for each class of goods and services. There are more than 40 different classes of goods and services. With your application, you will need to include:
- The categories of goods and services for which you will use the mark.
- Any design component related to the mark.
- The date of the first use of the mark in commerce.
- Samples of how you are using the mark.
A standard character mark, also referred to as a word mark, often won't require any special fonts, designs, or colors, so you can simply type the words into the space on the application. If you're filing for protection on a logo, stylized mark, or other design mark, you must include an image or drawing of the mark exactly as you will use it.
After filing the application online, you should receive a response from the USPTO reviewer within six months, although the process can take longer. If your application is rejected, you will not receive a refund for the application fee. However, you can file an appeal, and the mark will go through another review with the USPTO. Should you choose to appeal, you must do so within six months of receiving the response to your initial application. If you don't respond within six months, the mark is considered abandoned.
Before officially approving your application, the USPTO reviewer will publish the information in the Official Gazette. Any party may review the notice and protest if they feel your proposed mark could conflict or damage theirs. If no one responds to the publication, you will receive approval. Make sure to take time to review your mark within the publication.
You must use the mark in commerce within six months of receiving approval, or a Notice of Allowance, from the USPTO. After using the mark in commerce, you must file a Statement of Use (SOU) form. When you file the form, include pictures of products that you have been selling with the mark, along with any proofs of purchase, such as receipts. There is an option to file for a six-month extension and pay a fee.
After you file the SOU form, your mark will move from the intent-to-use phase to a fully registered trademark. You will receive an official certificate in the mail. This means you can use the registered symbol with your mark.
The USPTO also requires you to fill out maintenance forms within a few years of receiving approval. This process allows the USPTO to ensure that the mark is still being used in commerce. Trademarks typically last for 10 years as long as you keep up with the maintenance forms and fees.
Registering a Trademark Internationally
Some companies do business outside of the U.S., so they may choose to file applications on the international register. If you want to register your trademark on an international scale, you must register through the Madrid Protocol, or Madrid system. It is administered in Geneva, Switzerland, by the World Intellectual Property Organization (WIPO). You can file an application within the U.S., since it is a member of the WIPO, and register your mark in several countries.
Why Is it Important to Register a Trademark?
Registering a trademark allows you to use a mark exclusively. When you use the mark on your packaging or in marketing materials, it should ensure that your customers can distinguish your items from other similar products from competitors. If you don't register your trademark, someone else can use something similar or even identical without any legal risk.
Reasons to Consider Not Registering a Trademark
Business owners whose company names are too generic will not qualify for trademark protection. For example, if your business is called "The Barber Shop," there is nothing unique or protectable about this name. Therefore, it would not qualify for registration, and anyone else could legally use the same name.
The purpose of a trademark is to allow a company to exclusively use a name, mark, symbol, logo, phrase, or other mark and ensure that customers can distinguish that company's products or services from another. But granting a trademark to "The Barber Shop" limits others in the same industry from using a generic name that describes their services.
If you have a generic business name, it doesn't make sense to go through the process of registering a trademark on it because it will not be approved. You can consult with an intellectual property attorney to discuss options for making your business name more specific or filing for trademark protection on something else, such as your company's slogan.
You might also choose not to file for trademark protection if your mark is too similar to another registered mark. However, continuing to use the mark could put you at legal risk since the owner of the trademark could sue for infringement. You may qualify for a trademark if your logo is unique and you operate in a different category of goods and services than the other mark. For example, Delta Airlines and Delta Faucets both have trademark protection because they are operating in different industries.
In some cases, the cost to file a trademark isn't worth it to some business owners. For example, if you plan to open a small, local flower shop, you might not be as worried if someone opens another similarly named flower shop in another state.
The USPTO will not issue trademark protection for any marks that include:
- The U.S. flag.
- The name or likeness of a deceased U.S. president, unless the president's widow has given consent.
- Names of living person(s), unless they have given consent.
- Symbols or words that disparage deceased or living persons, national symbols, institutions, or beliefs.
- Other local and federal governmental symbols.
Reasons to Consider Registering a Trademark
When you register your trademark, you have exclusive rights to use that mark in commerce. Upon receiving approval from the USPTO, you own the legal rights to the mark. You can also take legal action against anyone who uses something similar or identical in commerce.
There is no deadline to file a trademark application. However, if you plan to file for trademark protection, it's best to do so before you start using the mark in commerce. If another person or company files a trademark application on the mark before you do, you could lose the opportunity to do so. Furthermore, if their application is approved, you can no longer use the mark without infringing on their trademark rights.
What Could Happen When You Register a Trademark?
When you register a trademark, you are the only person who can legally use that mark on packaging, marketing materials, and other materials used to promote and sell your product. Additionally, the legal right to a trademark can limit the approval of marks that are too similar.
What Could Happen When You Don't Register a Trademark?
Not registering a trademark could limit the success of your business. Without an identifying mark, it will be more difficult for your customers to identify your products and services and develop brand loyalty. If you don't trademark your business name, another company could open up with the same name. That company could also trademark the name if you haven't already filed. It's critical to properly protect your business name to make sure that no one else can use it.
Frequently Asked Questions
- What is the difference between a trademark and a business name?
You must register your business name in the state in which you are operating. However, registering the business name does not protect it from being used by someone else. Some states will restrict companies from registering business names that are too similar to others, but this is specific only to that state. If you want to protect your business name on a national scale, you must file a trademark application with the USPTO.
- Can I register a domain name?
Yes, as long as an identical or similar domain name has not already been registered with the USPTO. If you choose to register your company's domain name as a trademark, it's best to file the application without the extension (.com, .net, etc.) since registering only your domain name with .com at the end reduces the protection. Someone else could technically file an application for the same domain name but with a different extension.
Steps to File
The first step in filing for trademark protection is to finalize the design. Keep other options as backups in case you find that your idea is too similar to something that has already been trademarked. As you work on designs and options, look at examples of some of the most recognizable trademarks in the nation. For example, the red, white, and blue logo on a can of Pepsi makes it easy for a customer to identify. The USPTO can deny applications based on "scandalous" or "immoral" phrases, images, or logos, although this is rare.
The next step in registering a trademark is performing an extensive search on the USPTO online trademark database. You can find similar marks or those that might use words that are too close to yours. Finding a similar mark during the search means that you need to modify your mark to make it more unique. Continuing to use the mark puts you at legal risk since the owner of the trademark could sue you for infringement.
If you don't find anything too similar in your search, step three is filling out a trademark application. Most applicants submit their applications online because the process is much faster and more efficient. You must include an image of your mark in JPG format if it is a logo. Set aside uninterrupted time to complete the application. When you access the system, there is a 60-minute initial time limit to complete the form. There are opportunities to extend the time limit, but once it expires, you have to start over.
You can find the necessary forms within the Trademark Electronic Application System. Select "initial application form" and make sure to read all FAQs and warnings concerning your personal information. If you want to expedite your application, choose TEAS Plus. This form works for most trademark registrations. When you establish your filing classes and have your image files ready before you begin, you can save up to $100 per registration.
The next step is designating who will own the trademark. In a sole proprietorship, the single business owner can be the owner of the trademark. If your business is a corporation or LLC, it's best to list the name of the business as the trademark owner. You can also add additional owners of the trademark within the application. The benefit of registering yourself as the trademark owner is that you can use it in other businesses without changing the trademark registration. When the business owns the trademark, it is considered a business asset.
Fill out all starred sections. Make sure to provide all necessary information about the trademark. It should include specifics to ensure that your trademark application covers all planned uses of the mark. You will also need to identify whether the mark is a special form (design represented with an image file) or character mark (text only). For special forms, include a brief description of the mark. You must also complete the additional statement section, which includes questions about the mark. The questions will ask for translation of any foreign words used in the mark and whether the mark includes names of living people, and if so, whether you have consent to use their information in the mark.
You will also need to choose the trademark class (or classes). The cost to register a mark within a single class is $225. It's best to restrict your application to one class, unless you have a large and well-developed business. Indicate whether the application is Section 1(a), which means you are actively using the mark in commerce, or Section 1(b), which means you are planning to use the trademark in the future. Make sure to attach a graphic design or photo of the actual packing, tag, or sign that will be used on your product.
Before submitting, verify the correspondence information. Make sure that the contact person, mailing address, and email address are all correct for all follow-up communications. You may qualify for a reduced fee if you authorize email communication. Preview the TEAS Plus application before filing to make sure all information is correct. When you submit the application, you will affix your electronic signature to attest that all information is accurate and valid. The final step is paying the required fee. You will receive an email confirmation and payment receipt within 24 hours of submitting.
After submitting the application, you can track the status in the Trademark Application and Registration Retrieval System by using the filing number. When you track the application, you can immediately see if the USPTO has requested any modifications to your mark. It typically takes about a week for the application to show up in the USPTO database. The review process takes about 90 days. If the reviewing attorney has questions or issues, you will receive an email with details about the request and a deadline to submit information. Failure to meet the deadline will result in your application being dismissed.
When you receive approval on your mark, you can start using the registered symbol ® with your mark. This symbol warns others against using your mark. Trademark protection also allows you to sell and license your brand. You must remember to pay maintenance fees at the necessary times within the 10 years that the mark is valid.
If you need help with registering a trademark, 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.