Trademark Process: Everything You Need to Know
A trademark is a word, name, phrase, logo, or even a symbol that businesses use to assign an identity to the company or distinguish a specific good or product.6 min read
Updated November 25, 2020:
Trademark Process: Everything You Need to Know
The trademark process involves several steps. A trademark is a word, name, phrase, logo, or even a symbol that businesses use to assign an identity to the company or distinguish a specific good or product. In essence, the trademark is the brand name of the company. A trademark must be registered with the United States Patent and Trademark Office (USPTO). Keep in mind that the trademark is not permanent and will only remain valid if the trademark is renewed every 10 years.
Registering a Trademark
If you are considering registering a trademark, you should first consider whether or not it’s worth doing it alone. It is advisable to hire a qualified trademark attorney who can assist in the process to ensure that you receive the trademark protection you are looking for promptly. Further, the process of obtaining a trademark is a legal one—with legal requirements, fees, and deadlines that must be followed to be successful. The following are four steps that a business should take when registering a trademark:
Step 1. Pre-Registration
Only companies that manufacture or sell goods and/or services are entitled to trademark protection. Inventions, literary works, and other types of original artwork aren’t covered. Pre-registration also includes looking up local statutes on the registration of trademark names to see if certain ones are allowed.
Step 2. Mark Selection
Before applying for trademark selection, you must select the mark that you will use. This simply means that you will need to select a name that is eligible for trademark protection. There are two key requirements when making such a selection:  The mark must be used in commerce and  the mark must be unique, meaning it must not already be in use. There are four categories of uniqueness that the mark can fall under: arbitrary, suggestive, descriptive, and generic. Arbitrary is when the mark is distinctive. Suggestive is treated the same way as those marks under the arbitrary category. Trademarks that fall in the descriptive category are only available for protection if they have a common secondary meaning, especially the consumers who may be purchasing the product or service. Generic trademarks do not apply for protection since they aren’t unique.
Another thing you’ll want to think about is whether or not the mark you selected is robust enough to apply for trademark protection. When selecting your mark that you will want to have protected, consider your product or service, and determine whether or not the mark relates to the product or service. You’ll want to select the strongest mark you can for a greater chance of success.
Be sure to conduct a search on the USPTO website to see if the trademark is already protected by another business. If your product or service is going to be sold outside of the United States, you’ll need to search the trademark registries of those countries you are going to conduct business in.
Step 3. Application
After you’ve selected your mark, you must file an official trademark application, in which you must identify one of two ways in which your mark is to be used – for use in commerce or with the intent to use. An “intent to use” means that your mark has not yet been used, but will in fact be used in the future. To “use in commerce” means that your mark has already been used, in which you must supply proof of its use. You can file your application online directly through the USPTO website. The following three types of applications are available:
- TEAS Regular: Filing fee of $325/per each class of goods and/or services.
- TEAS Plus: This option is considered to be the one with the most stringent requirements. There is a filing fee of $225 per each class of goods/services.
- TEAS Reduced Fee: The filing fee is $275 per each class of goods or services.
Step 4. Evaluation to Verdict
This last phase will involve the review of your trademark application, publication in the USPTO Official Gazette, and the issuance of a trademark certification of registration. You can monitor the status of your application through the Trademark Status and Document Retrieval System every couple of months. During this phase, your specific application will be forwarded to an examining attorney, who is responsible for the review of your application and ultimately determining whether or not it will receive trademark protection. If your application fails, you will receive an Office Action explaining the reasons for refusing your application. However, if any minor errors need to be addressed, the examining attorney will contact you directly so that you may fix such errors, rather than the entire application being refused. You will have six months to make the corrections; however, if you fail to do so within the required timeframe, then your application will be refused.
The trademark application process can take up to a year. Note that it takes roughly 12 months for the examination to be completed, potentially longer if there are issues, minor errors, or missing documentation.
If there is opposition to the trademark once it is published in the Official Gazette, a period of 30 days will be given for someone to come forward with any concerns. If not, the USPTO will register the mark and you will now have the full protection of your mark.
Trademarks vs. Copyright and Patent Protection
As previously noted, a trademark is a name, symbol, or any combination thereof that distinguishes the product or services of one seller from that of another. A patent is a license provided by the government, specifically the USPTO, providing you with the protection of your invention. This means that no one else can use or sell your invention, as you’ll have patent protection. A copyright is an exclusive right to publish, perform, print, or record a piece of literature, art, or musical material.
- Your work is protected immediately after you create it. You need not register for copyright protection.
- While you are not required to register, many people do in fact register for the added protection and proof of ownership.
- As the holder of the copyright, you have the authority to transfer pieces of your work to others, this can include allowing others to perform or display your work publicly, issue copies, or reproduce it either in pieces or in its entirety.
- You must file a patent application to be protected.
- Generally, people will file a utility, design, or plant patent; this depends entirely on the type of invention you have. However, you can in fact apply for all 3.
- The patent process can take one to several years to complete, depending on the complexity of your invention.
- The patent filing fees can be must costlier than trademark fees, particularly if you hire an attorney to assist you in the patent process. Even if you hire an attorney to assist in the trademark process, the legal fees are generally cheaper as the trademark process is much more straightforward than the patent process.
- While a trademark provides that you must select a mark to be protected, the patent process involves a lot more detail in which you must thoroughly explain the invention, how it is new and obvious, and provide several illustrations of your invention.
- Once you do obtain protection, your invention will be protected for a period of 20 years, with the ability to renew indefinitely.
The important thing to remember is that trademarks, patents, and copyrights are types of Intellectual Property (IP) protections. You’ll want to first determine what type of protection you need; if you want to seek trademark protection, you’ll be able to utilize the above-mentioned steps to navigate the process.
If you need help patenting your product or learning more about the costs associated with the process as well as your options, 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.