How to Trademark Something: Everything You Need to Know
How to trademark something requires several steps to take in order to trademark your intellectual property.11 min read
How to Trademark Something
How to trademark something requires several steps to take in order to trademark your intellectual property.
1. Select a Non-Generic Trademark
You cannot legally trademark something that is generic. The stronger your mark is, the easier it will be to prevent people from using it. Every mark falls into at least one of these categories.
- Fanciful: This is something like an invented word that has no real meaning.
- Arbitrary: This is an actual word that has a known meaning, but is not in any way related to the product or service that you are offering. For example, the company Apple is arbitrary because although apples are a type of fruit, the company Apple sells computers.
- Suggestive: This is a type of mark that suggests a connection to the goods or services that it is offering without actually describing them.
- Descriptive: This type of trademark is a word or design that actually describes the goods or services that are being sold. Be careful that your descriptive mark is not too generic; otherwise, you will not be able to register it.
Come up with a huge list of possible names or trademarks. The most options you give yourself, the better your chances of ensuring a non-generic trademark. If you are concerned, immediately send your list to your patent attorney so they can do a quick search of business names and trademarks in your industry and location.
If you want your attorney to do an extensive search and return each possible name and trademark with a detailed risk analysis, this can cost anywhere between $3,000 and $4,000.
Historically businesses and individuals fight to trademark even the strangest and most unique names. The trademark for the iPad had issues at first with Fujitsu. Fujitsu beat Steve Jobs to the iPad trademark by purchasing the name back in 2003 for a mobile phone. Apple even had a problem with that name when it caused a multi-year battle with The Beatles' record company.
HBO's Sex and the City franchise had a few trademark issues when a New York entrepreneur tried to start a health and fitness business called "Health and the City." Despite HBO telling the owner to stay away from their trademark, "Health and the City", won the dispute.
2. Make Sure the Mark Meets All Qualifications for Registration
The Patent and Trademark Office can reject your application if you mark does not meet all of the qualifications for registration.
- You cannot trademark a last name, any person's full name, or anything that sounds like either of the two.
- You can't trademark anything offensive.
- Trademarks won't be given for marks that describe the geography of the goods or services.
- You can't get a trademark on the translation of a foreign word that is generic or descriptive.
- You cannot trademark an existing book or movie title.
3. Search the Trademark Electronic Search System
The Trademark Electronic Search System, also known as TESS, is on the U.S. Patent and Trademark Office website. This search system allows you to find out if your proposed trademark is identical or too similar to another trademark that is already registered. If it is, then you can change your trademark so that it is more distinctive.
If you want to register a logo, search the Design Search Code Manual on the USPTO website. This will give you the codes to identify your design. You can use those codes to search for any similar designs.
If you do find marks that are the same or similar to yours, assess whether they cover goods are services that are related to yours.
4. Identify the Geographic Scope of Protection You Need
If you only sell your product or service within the state of New York and you have no plans to expand your sales into other areas, then you probably don't need to register your trademark with the federal government. Instead, you can just register your trademark with New York.
However, if you do plan on selling your products or services nationwide or even internationally, then you will not only want to register your trademark with the U.S. Patent and Trademark Office, but also with the applicable foreign countries.
5. Draft a Description of Your Goods and Services
Put together a paragraph of information that describes exactly what your trademark is going to protect. This will be included in your trademark application and will help determine whether you will be granted protection or not.
6. Classify Your Products or Services
When you fill out your trademark application, you will need to classify your products or services with a code you get from the USPTO's Acceptable Identification of Goods and Services Manual on the USPTO website. This is another part of your application that will determine the use and protection of your trademark.
Filing rights are based on what you will actually use the trademark for. You need to make sure that you think about the current purpose of the brand name as well as what you may want to use if for in the future. For example, if you are currently filing your trademark to use for handbags and are planning to use it later on with jewelry, you should plan this into your application. You then need to make sure that you can prove you are using the mark in those ways in your application as this is a requirement in the U.S.
7. Create a jpeg File of Your Trademark
When you file your trademark application, you will need to attach a jpeg image of your trademark. If your trademark includes words and a design element, you need to create separate files for each.
8. Complete Your Trademark Application
You can complete the trademark application online using the USPTO's Trademark Electronic Application System. This will protect your trademark throughout the entire country.
9. Pay the Filing Fee
You can do this online with a credit or debit card. The fee varies depending on your application and trademark and how many classifications your products and services are under.
10. Monitor Your Application Status
You can check your application status every three to four months. All you have to do it enter the serial number given to you when you applied in the Trademark Status and Document Retrieval system. You can immediately view your status. The PTO examiner will review your application about three months after you submit it. If you receive a document that is called an Office Action, that means there are problems with your application. You have six months to reply to the Office Action. After this time your application will be abandoned.
If or when the examiner approves your application, your trademark will be published in the PTO's Official Gazette. This gets published online once a week.
11. Wait 30 Days
Once your trademark is published in the Official Gazette, the general public has 30 days to object to your mark by filing an action in the Trademark Trial and Appeal Board. If this happens, you should consult with your patent attorney on what to do next.
12. Receive Your Registration Certificate
If no one objects to your trademark, you should receive your registration certificate 11 weeks after publication in the Official Gazette. The certificate gives you a "use-in-commerce" mark or a mark based on a foreign registration.
If you receive a Notice of Allowance, then you have six months to submit a Statement of Use to the Patent and Trademark Office. You can also ask for a six-month extension if you need more time to complete the Statement of Use. After the PTO approves your Statement of Use, you will get your registration certificate.
13. Renew Your Trademark Registration
Trademark registrations need to be renewed between five and six years after the initial registration as well as between the ninth and tenth year following your initial registration. After that, you only need to renew it every 10 years.
For your trademark to remain active, you need to continue to use it in commerce or have an acceptable reason for not using it.
14. Put a Trademark Watch in Place
Once you have trademark rights to your logo, you will want to protect it against infringement. The best way to enforce your trademark rights is to have a "trademark watch" in place. A trademark watch will let you know when a third party starts using a logo that is too close to yours.
Speak to your patent attorney about putting a trademark watch in place.
15. Register Your Domain Name
In addition to protecting your trademark and brand name with the federal government, you should also be protecting your brand online. When you start your business one of the first things you should do is register your domain name. It is a common practice for cybersquatters to buy up domain names of popular companies in order to resell them for a very inflated price.
In 1999, the Anti-Cybersquatting Consumer Protections Act was passed by Congress and signed by former President Bill Clinton in order to protect businesses from this happening. Read up on what your rights are in case something like this happens.
If you are worried about this or you are having trouble buying your domain name, head over to The Internet Corporation for Assigned Names and Numbers (ICANN). They authorize a supervisor of domain name registrations and have an online system that settles domain name disputes if you feel that you need to take action.
A company can register its domain name with Country Top Level Domains (CTLDs) in key countries like .uk for the United Kingdom and .fr for France. This helps to protect your rights in other countries. It also allows you to monitor domain filings around the world to prevent any infringement.
Internet businesses that are registering their names should avoid registering their web extension, like .com or .net, alongside their name, unless they're going to register the mark both with and without the web extension.
Getting a trademark without the domain extension will help you better protect your trademark from other businesses who may register the same name by just adding a different extension like .org or .co.
What Is a Trademark?
A trademark is a type of intellectual property such as word, phrase, symbol, design, or a combination of any of these things, that identifies the source of a product or service. A trademark is how you distinguish yourself from your competitors. A trademark can be granted on a distinctive name, a logo, or a slogan.
Trademarks are given by the federal government through the U.S. Patent and Trademark Office (USPTO). If you own a trademark, you have exclusive rights to that trademark and can prevent anyone else from using it. These rights are protected by federal law and state law.
Registering your trademark with the federal government protects you in several different ways:
- It presumes legal ownership in an infringement lawsuit.
- It gives public notice of your rights.
- You can record your mark with the U.S. Customs and Border Protection Service, which will prevent the importation of any goods that infringe on your trademark.
- It allows you to use the ® symbol on all of your goods and services.
- You can bring an infringement case to a federal court.
- You can apply for trademark protection in other countries.
What Do You Need to Trademark Something?
To file your application for a trademark with the USPTO, you will need:
- A description of the trademarked goods and services
- A digital file attachment showing image of trademark saved as a jpeg
- A product identification code
- A fully completed online trademark application
- Your filing fee
- The identity of trademark owner, whether it's a business entity or an individual; the owner doesn't need to be a U.S. citizen
- The applicant's name and address - All correspondence with the USPTO will go through this address, so take extra care that this information is correct
- A drawing of the mark
- The classification of all of goods and services related to the mark
- The reason you are filing
- An example of your trademark in use, such as an image of your good or service with the mark on it
- The signature of the applicant
How to Register Your Trademark Internationally
It is important for you to control your mark globally, even if you don't feel that you will be doing business in those countries right away. While in the United States you need to prove that you are using the mark in order to protect it, trademark rights in most other countries are only based on the filing. If you are launching a brand in the U.S. and you think you will eventually begin using your brand overseas, you should file registrations in those countries before someone else leverages your brand equity that you have worked hard to establish in the U.S.
1. Run a Check on Your Trademark
Just like you would for your trademark in the United States, you should check for the use of your trademark in other countries that you want to register in. You can do this for free through the USPTO.
2. Talk to Local Speakers
When you are thinking about extending your business to markets outside of the U.S., it's a good idea to speak with someone whose native language is that of the country you want to extend into. You don't want to embarrass yourself by using a brand or image that translates to a negative or offensive meaning in that country.
3. Choose the Countries That Make Sense To Your Brand
Prioritize the countries and jurisdictions that make the most sense for your business. Which markets are you going to want to work in? Which will be best for your product or service? Secure your trademarks in those countries first. It is overwhelming and often unnecessary to register your trademark in every country.
4. Apply Through the International Registration
One of the most internationally recognized systems for registering trademarks is the Madrid System. At least 95 countries have adopted this system for international trademark registrations. The United States is one of them.
The Madrid System is a centralized application that allows you to file one application, in one language, with one fee, to protect your trademark in any of the countries that you choose.
- Submit your international application through the USPTO.
- They will send it along to the World Intellectual Property Organization (WIPO).
- WIPO will examine your application, record it in the International Register, and forward it to your requested countries for their approval.
- This usually takes between 12 and 18 months.
- Your registration in each of the countries that you chose is good for 10 years.
- After 10 years, you can renew for an additional ten years.
- It's important to pay attention to the countries that are not part of the Madrid System. For example, Canada is not a member country. If you want to register your mark in Canada you will have to file with the Canadian trademark office.
5. Apply for a Community Trademark
You can also opt to apply for a trademark that will protect your intellectual property throughout the European Union. To do this you have to apply for a Community Trademark. With this application, you pay one fee and complete only one application and if approved, your mark is protected in all of the countries that are members of the European Union. The one problem is that if you mark is rejected or in use in one of the countries, your entire application will be rejected.
Frequently Asked Questions
- How much does it cost to trademark something?
Online trademark registration costs usually cost between $275 and $325.
- Do I need to trademark my business name?
When you apply to be a corporation or an LLC, the secretary of state's office checks to make sure that your business name is not being used by any other company in your state. When your LLC or corporation application is approved, your name is immediately protected in that state. If you plan on doing business in another state, then you should trademark your business name to prevent others from using it and confusing your customers.
This registration also does not stop sole proprietors or partnerships from using your name within your state. If you are concerned that this is a possibility, then you should trademark your business name.
If you have plans to expand your business nationwide and sell your products or services throughout the country, then you should protect consider protecting your at the federal level with a trademark.
- Should I trademark my name and logo before forming my LLC?
In the United States, common law rights apply to trademarks on a first use basis. This means that if you are already operating your business using a specific name and logo, you receive a little bit of protection if someone begins using the same name or logo in a similar product category or geographic location, even if you haven't registered your trademark yet.
Protect your trademark by using the designation TM after it. Apply for your trademark as soon as you can and then you can use an ® symbol once the mark is registered.
- What is a logo?
A logo is a type of trademark that includes a design and is used by company or person to place on its products or printed materials. The logo can be a design on its own, a design with letters or words, or a design that consists solely of stylized words or letters.
If you need help with how to trademark something, 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.