Trademark Checklist: Everything You Need to KnowTrademark Law ResourcesTypes of TrademarksHow To Register A TrademarkTrademark Search
A trademark checklist starts with developing a trademark. Then, you need to search its availability, create and submit a trademark application, and enforce it.6 min read
Trademark Checklist: How to Register and Maintain Trademarks
- Make a trademark.
- Find out whether you are eligible for a trademark.
- Do a trademark search in the United States Patent and Trademark Office (USPTO) Trademark Electronic Search System (TESS) database.
- Read about your legal options.
- Fill out and submit a trademark application.
- Respond to USPTO Office Actions.
- Use your trademark.
- Enforce your exclusive trademark rights.
- Keep your trademark active.
Trademark Checklist Step 1: Develop a Trademark
First, develop a unique, distinctive trademark. It can be a:
- Business name
Good trademarks are:
- Easy to spell and say
- Generally likeable
- Unique, with distinctive fonts, colors, or capitalization
- Have a strong link to your business and your ability to make a profit.
Trademark Checklist Step 2: Determine Your Eligibility
If you do business within state lines, register your business with your local Secretary of State. You can then apply for a state trademark. If you do business across state lines or throughout the nation, you need a federal trademark.
If you already use the business name, slogan, or logo you want to trademark, you'll file a "use in commerce" application. If you plan to start using your trademark soon, you'll file an "intent to use" application.
Make sure you know which of the 45 International Classes your trademark fits into. You can register in more than one. Each one increases your filing fee.
Also, it's important to understand that not everything is eligible for trademark. You can't register generic or geographic terms. If you're trademarking a business name, it needs to meet one of these requirements:
- Descriptive: These describe the purpose of your business.
- Suggestive: These refer indirectly to the purpose of your business.
- Arbitrary: These are everyday terms that have no direct link to your business.
- Fanciful: These are newly created terms with no real meaning.
Trademark Checklist Step 3: Do a Trademark Search
You can't trademark something that's already registered. Search the USPTO's TESS database to find out if yours is registered. Your new trademark can have some similarities to an existing trademark. However, it must stand on its own. If you already use your trademark, you'll have an easier time proving necessary connections.
This is also a good time to see if your trademarked domain name is available. If it's free, apply to register it with an Internet Corporation for Assigned Names and Numbers (ICANN) accredited registrar. If it's taken, use the WHOIS database. Find the owner. You can offer to buy it. You can use the ICANN arbitration process for help securing the domain.
Trademark Checklist Step 4: Understand Your Legal Options
You can file a trademark application on your own. However, you might need legal advice along the way. If a trademark search turned up similar results, you should consult with a trademark attorney. If you want to trademark something more complicated, like a slogan, consider hiring an attorney.
Keep in mind that filing the application is often the easiest part of the process. Responding to changes and enforcing your exclusive rights can be much more difficult.
Trademark Checklist Step 5: Compile a Trademark Application
Navigate to the USPTO's online Trademark Electronic Application System (TEAS) to file your trademark application online. You'll need the following components:
- Basis for Application: Mark "use in commerce" or "intent to use"
- Identification of the Class of Goods or Services: Use the appropriate International Class
- Description of the Goods or Services: Describe your business's goods and services
- Specimen: Provide an image of the trademark
- Statement of Use: Provide an example of the trademark in use
- Information About the Applicant: Submit relevant information about yourself
- Declaration: Sign to indicate that you completed the application
- Filing Fee: Check the USPTO's fee schedule for the current costs
Trademark Checklist Step 6: Respond to Office Actions
Some trademarks receive approval right away. Others require amendments or disclaimers of the unregisterable components. When the trademark examiner sends an Office Action, or official communication, it's your responsibility to respond. Note that some Office Actions have time constraints.
The following are some of the most common grounds for refusal of a trademark application:
- You aren't the rightful owner of the trademark
- The subject matter is just a trade name
- The subject matter is utilitarian in nature
- The subject matter is a nondistinctive display of goods or packaging
- The subject matter is mere ornamentation
- The subject matter is a generic name for goods or services
- The subject matter is the title of one creative work or the name of the artist or author
- The trademark is immoral or scandalous
- The trademark is deceptive or makes a false connection with people, institutions, or beliefs
- The trademark includes a state, national, or international flag or a coat of arms
- The trademark includes illegal material
- The trademark includes a person or name without appropriate consent
- The trademark is too similar to an existing trademark
- The trademark merely describes or deceptively misdescribes your goods and services
- The trademark has a geographic description or a misleading geographic description
- The trademark is primarily a surname
- The trademark merely identifies a character in a creative work
Not all trademarks can be registered on the USPTO Principal Register. If yours can't be registered, it may be registrable on the Supplemental Register instead. This doesn't allow as many protections, however.
Trademark Checklist Step 7: Use Your Trademark
Once you receive your registered trademark, you should begin to use it right away. If you don't use it, you might accidentally abandon it. After three years of nonuse, a third party can build a case for abandonment. They can then begin to use your trademark.
In some special circumstances, you may be able to argue that you experienced forced nonuse. This only applies if you stopped using a trademark due to something beyond your control, though. A simple business decision doesn't count.
Trademark Checklist Step 8: Defend Your Trademark
A trademark gives you exclusive rights to:
- Use your trademark
- Make money from your trademark.
You'll need to enforce these rights by defending your trademark, though.
Say someone copies your trademark. In response, you can send the infringer a cease and desist letter. If they don't stop using your trademark, you can sue.
It's your responsibility to make sure that your trademark doesn't become diluted. This happens when multiple third parties use your trademark. But for whatever reason, you can't or don't stop them.
Trademark Checklist Step 9: Maintain Your Trademark
You can have a trademark for an indefinite period of time. However, you have to file trademark maintenance documents from time to time. File a continued use statement five years after the date when you originally register the trademark.
If needed, you can apply for a renewal 10 years after the original registration date. You can keep doing this every 10 years.
Frequently Asked Questions
- How Long Does It Take to Get a Trademark?
After you submit an application, you'll typically get a response within six months. Most trademark applications are approved within a year. Some take longer if they have major legal proceedings.
- How Long Do Trademarks Last?
If you actively use them, they can last indefinitely. Make sure to file a renewal request before the end of every 10-year period to maintain your trademark.
- When Can I Use Official Trademark Symbols?
You can use a TM or SM symbol with your trademark before it's registered. This simply shows that you're claiming the rights to it. You can't use the ® symbol until the trademark is registered.
- How Much Do Trademarks Cost?
- Are Refunds Available for Rejected Applications?
No, the USPTO doesn't refund filing fees for rejected applications or International Classes.
- Do Trademarks Offer International Protection?
A trademark registered with the USPTO only protects your rights in the U.S. For international coverage, file an application under the European Union, the Madrid Protocol, or the Andean Pact. You can also file trademark applications with most countries directly.
If you need help with registering a trademark, you can post your question or concern 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. They have also worked with or on behalf of companies like Google, Menlo Ventures, and Airbnb.