KEY TAKEAWAYS

  • A trademark is a legally recognized word, phrase, symbol, design used to help consumers identify your goods or services.
  • A company may get stronger, exclusive, and nationwide rights to use a trademark from the U.S. Patent and Trademark Office.
  • To file a successful trade mark application, avoid common mistakes such as choosing a non-distinctive trademark, misclassifying goods/services, and failing to conduct a comprehensive trademark search. 

How to Register a Trademark

If you have created a mark or logo for your business, registering your trademark or logo is important to the success of your organization. A registered trademark provides various benefits such as broader rights and protections. A registered trademark is an asset to your business.  If you are a domestic trademark applicant, you can trademark your logo without the assistance of an attorney through the  United States Patent and Trademark Office (USPTO), using the steps we have outlined below. However, it is strongly recommended to work with a trademark attorney who understands trademark law. This can help avoid a waste of resources and time. If you are a foreign-domiciled trademark applicant, you must have a U.S.-licensed attorney represent you. 

What is a Trademark?

 A trademark is a legally recognized word, phrase, symbol, design, or a combination of these. It helps consumers to identify your company's goods and/or services and prevents the possibility of brand confusion. With a trademark, your business has exclusive rights to use the mark in commerce.

Why Register your Trademark?

Registering your mark proves ownership, and secures your business's future. This simple, yet important step, builds your brand's integrity, reputation, and recognition. So, to say the least, to protect the integrity of your brand, it is important to register your mark.

Registering your mark with the United States Patent & Trademark Office provides myriad of benefits:

Legal Protection and Enforcement

  • Nationwide protection: Protects your trademark rights across the entire United States.
  • Presumption of ownership: Creates a legal presumption that you own the trademark, making it easier to defend your rights in court.
  • Right to sue: Grants you the right to sue infringers in federal court, often leading to stronger remedies.
  • Customs protection: Allows you to record your trademark with the U.S. Customs and Border Protection to prevent counterfeit goods from entering the country.
  • Foreign Filing: Can potentially aid in foreign filings by claiming benefit to earlier filing.

Potential Business Benefits

  • Public notice: Lists your trademark in a public database, alerting others to your ownership.
  • Brand protection: Deters others from using similar or identical marks, safeguarding your brand identity.
  • Licensing opportunities: Enables you to license your trademark to others for commercial use.
  • Increased business value: A registered trademark can significantly enhance your business's value.
  • Use of the ® symbol: Permits you to use the ® symbol, indicating to consumers that your trademark is federally registered. 

Steps to Register a Mark

If you’re ready to trademark your logo, the first step you should take is to conduct  trademark search. It is strongly recommended that you have a licensed trademark attorney conduct a search and advise you on the findings of that search. You can conduct a preliminary trademark search by following the steps we have outlined below:

  1. Open the USPTO Trademark Electronic Search System online.
  2. Conduct a “Basic” or “Expert” search.
  3. If you are not sure what to search, try running a basic search.
  4. If your search results do not generate any results, expand the field of search.
  5. Lastly, review the records you found.

In addition to the steps above, if you would like expert assistance, you can also contact an attorney to assist with the process. 

Prepare the Trademark Application

After you have finished your research, you will need to gather all the necessary information; such as the type of mark and your business's biographical information. You’ll also need to specify the description of goods/services associated with the mark. 

File the Trademark Application

To get started on your application, you must create a USPTO.gov account with two-step authentication. After doing so, you’ll need to verify your identity before you can log in to access the forms.

After setting up your account, you’ll need to determine a filing basis. A filing basis  is the legal basis for your application. It determines how you'll claim ownership of the name. The application provides several basis up which the application can be filed which are:

Basis 

Explanation

Use in commerce  You will select this basis if you are currently using your mark in commerce with your goods and/or services.
Intent to use in commerce  This basis is selected if you have a bona fide intention to use your mark in commerce with your goods and/or services in the near future.
Foreign trademark application Choose this basis if you own a foreign application. It must be filed within six months of your U.S. application for the same mark for the goods and/or services. This basis is also called a "foreign priority basis." You are requesting a "priority" filing date for your U.S. application. It should be the same as the date of the foreign application.

Once you have determined the appropriate basis, you can submit your application online through the USPTO's Trademark Electronic Application System (TEAS). If your mark has design elements, you'll need to upload a .jpg image of it as part of your application.

It is strongly recommended that you have a licensed attorney review your application prior to filing. 

The USPTO assigns a serial number to your application. Check your application's status by entering the serial number in the TSDR system. Or, call the trademark status line at 571-272-5400.

After filing your application, you can expect the following processing times:

Lapse in time between filing your application and…

Average 

Target

First examining action in TSDR record 7.8 months 8.4 months
Trademark registering or application abandoning 14.3 months 14.4 months

The filing fee for your trademark will depend upon the type of TEAS you file. With USPTO, you have two options:

Fee

Explanation

TEAS Plus: Pay $250 per class of goods/services.-  If you file TEAS Plus, you will pay all the filing fees with the initial application.
TEAS Standard: Pay $350 per class of goods/services. With TEAS Standard, you’ll pay the filing fee for at least one class of goods or services with the application. You can pay any fees for more classes later in the process.

Examination Process

If your application meets the filing requirements, it's assigned to an examining attorney. They will determine if federal law permits trademark registration. Filing fees are usually not refunded. This is true even if your application is later rejected. 

If the examination attorney does not find a reason to reject your application, your trademark will be approved for publication in the USPTO’s Trademark Official Gazette (TMOG). Getting to this step can take about a month. 

If the examination attorney rejects your application, the examining attorney will  issue a letter called an office action which explains the reason for the rejection. 

Respond to Office Actions

If your trademark application is rejected, then each and every issue of the rejection must be fully addressed in an office action response. Typically, an Applicant has three months to respond to an office action.

Publication and Opposition Period

If the examination attorney approves your application, your trademark will be published in the TMOG. After the trademark is published, anyone who believes our trademark will harm their business may object. They must do so within 30 days of the publication date. This opposition period can be extended by third parties.

Final Registration

If no opposition is filed, USPTO will register your trademark in about three months after its publication in the TMOG (in the case of “in use” applications). If an opposition was filed but was unsuccessful, the USPTO will register your trademark after the TTAB dismisses the opposition. After your trademark registers, you must periodically file maintenance documents. Trademark rights, if properly maintained, can last as long as the mark is being used in commerce.

Tips for a Successful Trademark Application

Filing a trademark application is just the first step in protecting your company’s brand. When you file, you should ensure that you steer clear of these common mistakes to ensure your application is successful:

  • Not choosing a distinctive trademark
  • Choosing the wrong trademark class
  • Not thoroughly searching the trademark database
  • Not seeking professional assistance
  • Misclassifying the goods or services described in the trademark

Maintaining and Enforcing Your Trademark

After yourtrademarkis approved, the work does not stop there. There are also a few more things to consider:

  • Monitoring for potential infringements. Trademark rights must be “policed” in order to maintain your rights.
  • Understand the legal actions to take if infringement occurs.
  • Maintain your trademark registration.

Conclusion

Registering your trademark is an important step to take as a business owner. It secures your brand's identity and its exclusive use in the market. Whether you're filing domestically or seeking international protection, you must understand the trademark laws. If you need help with the process, always consult with an attorney.

Frequently Asked Questions

What is the cost to register a mark?

The cost to register your mark varies. The cost will vary depending on how many classes you need to file in as a government filing fee is applicable to each class of goods/services.

Is it better to copyright or register a mark?

Copyright and trademark offer different protections and are different areas of law. In some cases, it may help to secure both as you may have both copyright and trademark assets. Consult an attorney to determine the best course of action for your circumstances.

Should I trademark my name or logo first?

Whether to trademark your name or logo first depends on your business priorities. So, there is no general answer to this question. It varies by business.