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.7 min read
What is the Trademark Process?
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 in a timely manner. Further, the process of obtaining a trademark is a legal one—with legal requirements, fees, and deadlines that must be followed in order 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 good 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
Prior to 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.
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 good 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 there are any minor errors that 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 an 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.
Frequently Asked Questions
- How do I know if my trademark is eligible for federal protection?
The following marks cannot be registered:
- U.S. flag
- Federal/local government insignias
- Words/symbols that ridicule people, entities, religious beliefs, or national symbols
- Names of living persons unless they give consent
- Names of deceased persons unless the widow provides consent
- Immoral or scandalous marks
- Trademarks that are offered in only one state. You must offer the goods or services associated with the trademark in two or more states in order to seek federal protection.
- Why should I have my trademark put on the USPTO’s Principal Register and not the Supplemental Register?
First, it’s important to know that there are two registers, the Principal Register and the Supplemental Register. The register that provides the most benefit is the Principal Register. Some of the benefits of having your trademark on the Principal Register include:
- Anyone who engages in trademark infringement against your federally protected trademark will be liable for large compensatory damages
- The Supplemental Register fails to provide the same rights and protections that are granted by the Principal Register; therefore, you have the most protection with the Principal Register.
- How long will my federal trademark protection last?
Immediately after a trademark is put on the USPTO’s Principal Register, a certificate is mailed to the owner; the certificate states that the trademark is good for a period of 10 years. The registration can be renewed for an indefinite period of time in 10 year increments. In order to renew, the owner of the trademark must file a renewal application with the USPTO. If one fails to renew, all special benefits will be lost.
- Should a company register a trademark for state level protection?
The simple answer here is yes. In the event that the trademark is only used in one state, then the trademark should, in fact, be registered within that state. However, note that protection at the state level is far less than at the federal level. Further, if someone registered at the federal level, registration is not required at the state level. A benefit to registering at the state level is that notification will be given to anyone who searches the state’s trademark list that the mark is already registered and owned by someone else.
- State Trademark VS Federal Trademark: Which one is right for me?
If you want to register your trademark for protection, you have the following two choices. You can either register your trademark for state protection or federal protection. It is important to know the difference between a state and federal trademark, and the steps that must be taken to apply for both. While some information was previously noted on both types of protection, let’s learn a bit more about what each type of protection can do for you.
Some things to keep in mind regarding state trademark registration include:
- You must file your application through the state.
- Each state operates differently, and the fees and steps taken in one state may be wholly unique to that of another.
- You cannot apply for state protection unless and until you are actually using the mark.
- Once you begin using your mark, you already have general protection based on common laws associated with trademarks. State protection doesn’t add too much additional protection on top of that.
- Again, as previously mentioned, you want to be mindful of the fact that state trademark protection will protect your trademark only in that specific state.
- State trademark fees are inexpensive, and can save you an average of $200 compared to registration for a federal trademark.
- State trademark protection doesn’t give you the right to use the symbol ®. You can only use either TM (for a trademark) or SM (for a service mark).
Some things to keep in mind for federal trademark registration include:
- You must file your application with the USPTO
- You must include specific information relating to the trademark, when it was first used, proof that it is being used in more than one state, details of the trademark, and the product/good being sold.
- There is generally a filing fee of between $275-$375 per class of goods/services.
- The process itself can take between one to several years, depending on the complexities of your application.
- You may need a qualified attorney to help you register a federal trademark. A lawyer can do the leg work for you, and make the process go as quickly and smoothly as possible. Be mindful that additional legal costs will apply.
- You will have the utmost legal protection of your trademark at the federal level, which will benefit you in the long run.
- Each trademark is registered for a period of 10 years, at which point the owner of the trademark can apply for renewal.
- You can use the ® symbol, which provides added protection.
- If someone else should use your trademark, you can file a trademark infringement case in federal court.
- You can register your federal trademark with the U.S Customers and Border Protection Service to prevent infringed products from being imported into the United States.
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