When you have a trademark you want to protect, it can be important to register it with the United States Patent and Trademark Office to ensure you maintain your legal rights as you use the mark.
How to Register a Trademark
While there are certain underlying common law rights to your trademark as explained below, it is helpful to seek registration from the federal government to get the best protection possible for your goods and services.
What Is a Trademark?
There are actually two types of marks that are often referred to as trademarks:
- Trademarks; and
- Service marks.
A trademark is defined by the United States Patent and Trademark Office (USPTO):
“a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others.”
The USPTO defines a service mark, on the other hand, as:
“a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods.”
Even though service marks are distinguishable from a trademark, they are often still referred to as a trademark. The word trademark will be used to cover both trademarks and service marks in this article.
In simple terms, a trademark is any type of logo or name that represents goods and services. The trademark and associated common law legal rights begin as soon as the content is used. A trademark does not need to be registered but as described below, can be very helpful.
What is a Dead Trademark?
A “dead trademark” is defined by the USPTO:
“a dead or abandoned status for a trademark application means that specific application is no longer under prosecution within the USPTO, and would not be used as a bar against your filing.”
A dead trademark could possibly be registered with the USPTO, however, there are some risks involved with doing so. You will want to think through a couple of considerations.
First, it is important to consider how long a trademark has been abandoned. This is because, under a law called the Lanham Act, a mark is not considered abandoned until it has been discontinued without any intent to resume use.
If the mark has not been used for three years or more, then you are likely in the clear. This is because under the Lanham Act, after three years of non-use a mark is considered abandoned unless the owner can prove otherwise.
The next consideration is determining how the trademark “died.” If a mark died because there was a lack of maintenance of the mark, there is still a chance the original owner could still intend to use the trademark. There may then be a likelihood of confusion in the marketplace if you were to pick up the mark and attempt to use it as well.
What is a Fanciful Trademark?
Fanciful trademarks are marks that are inherently distinctive and refer only to the product or service to which they are applied. Because these marks are so distinctive, they are among the strongest types of trademarks that can be owned. Fanciful trademarks can be distinguished from more ordinary and easily descriptive marks.
These types of easily descriptive marks as opposed to fanciful marks, identify and explain the types of goods or services that are being offered. While that is very helpful for describing your product, they are also considered weak trademarks because they can be so similar to other trademarks used for similar products or services.
This means there can be less brand recognition and increased competitors for your potential market share.
While fanciful trademarks are very strong, there are some downsides as well to consider. Because there is no association between the specific product or service and what that product or service does, it may take the public a long time to establish an association with your goods or services.
What is a Poor Man’s Trademark?
A poor man’s trademark is essentially when a person mails their own art, writing, or other content to themselves using the United States Postal Service. The theory is that, because the content was mailed on a specific date, this provides official proof that the content was created by that date.
Unfortunately, with regard to trademarks, such proof would not be relevant in later trademark rights battles between two users to determine who has the higher claim to the trademark right. What is important is how the mark has been publicly used, and when.
What is Class 25 in Trademark?
Trademarks are split up into 45 different classes by the USPTO. These classes signify a specific type of good or service. Class 25 includes trademarks that cover most types of clothing, footwear, and headgear.
Class 25 is one of the most popular trademarks submitted to the USPTO for new trademark applications. This means the trademark you are seeking may be more difficult to obtain because there are greater competition and stricter scrutiny.
What is the Difference Between a Logo and a Trademark?
As discussed above, a trademark is a phrase, word, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A logo is simply a symbol or design that is used by a company, which may fall under trademark protection laws.
The Importance of Trademark Registration
Trademarks do not need to be registered in order to obtain legal rights in them as you use the mark in commerce. Trademarks that are openly used in commerce are protected under common law. Common law is the body of law created by judges that arises under judicial precedent.
This means that as you start using the trademark and it gains notoriety, it can be protected under common law without any formal registration. This protection has caveats and is typically restricted to only the immediate geographic region that you are in. The protection only extends as far as the market knows of your mark, and your ability to prove it.
Despite common law protection, Federal registration of your trademark with the USPTO is still a good idea and something you should strongly consider.
The USPTO is the federal agency charged with overseeing the issuance and maintenance of trademarks. This means they oversee the administrative process of trademark application and approval.
Federal trademark registration has its advantages. A registration helps to scare off potential competitors from utilizing your mark or a similar mark. Your trademark will show up on the USPTO website and will appear in searches competitors will do when looking to establish their own trademark.
This can help to save you legal battles down the line when another uses your mark because they did not realize that it was already in use.
Registration with the USPTO also gives your trademark greater validity and likelihood of success in a future trademark infringement battle that may arise in court. When you have a federally registered trademark, it provides you with a presumption of the legal right to that trademark.
Finally, USPTO registration will also give your trademark a nationwide validity rather than just a specific geographic scope. As mentioned above, common law protects your trademark rights only for your immediate geographic region, and only as far as people within that geographic region know of your mark. USPTO registration, on the other hand, provides you rights to your trademark on a national scale.
The Trademark Registration Process
Registering a trademark with the USPTO for your goods and services is a clear process to be followed and is governed by United States law. The USPTO website has some helpful tips and tricks as you begin this registration process.
Make a Decision about the Trademark
The first step in the process is to settle on the specific mark that you will be seeking an application for to protect your goods or services. Make sure you love the specific name, logo, and/or mark that you end up seeking registration for.
This will save you headaches from having to change it down the line and from the potential of losing brand recognition.
Moreover, it is important to make sure your mark will be something that the USPTO will approve. Not all trademarks will be approved by the USPTO.
Be sure to consider the mark format as well. There are three types of mark formats to be filed with the USPTO:
- Standard character mark;
- Stylized/ design mark; or a
- Sound mark.
These are described in more detail below.
Determine Eligibility for Registration
For a trademark to be eligible for federal registration, it must be used in the ordinary course of trade in commerce for goods or services. This means the trademark cannot be registered simply to reserve the right to the mark.
This means that to be classified as “use in commerce,” the trademark must appear somewhere on the good itself and then must be sold or transported within commerce. For a service mark, the mark must be used or somehow displayed in the sale or advertising of the specific services. These services, in turn, must be somehow rendered in commerce.
Searching for Competing or Related Trademarks
One of the first steps to start the trademark registration process is to make sure you can actually obtain the legal rights to your trademark. By conducting trademark searches, you will be able to see the other types of trademarks that are related to yours. This will help you to make a calculated decision on whether you should go forward with registering your trademark or if you should start brainstorming new mark ideas.
Trademark searches can be conducted using the USPTO’s Trademark Electronic Search System database, also called TESS. This shows both registered trademarks as well as pending applications.
Conducting thorough searches also is helpful to prevent a registration being turned down by the USPTO due to a likelihood of confusion. To conduct the most thorough search, it can be helpful to hire an intellectual property attorney.
Intellectual property attorneys are skilled in conducting searches using the TESS database and can uncover potentially similar marks that you may not be able to uncover yourself.
Determine the Appropriate Classification for Your Trademark
The next step is to familiarize yourself with the 45 different classes used by the USPTO to split up trademarks into various categories. Study the intricacies between the classes that pertain to your trademark and determine which classification is the best to file under for your specific mark.
You can also file your application under a number of classifications if you think your trademark will fit into more than one. The USPTO has a Trademark ID Manual that can be helpful as you make the classification determination for the goods or services that you are offering under your trademark.
You can even search through this ID Manual and find tips from the USPTO for the best classifications.
Determine the Basis for Filing
Another thing that is important to do before you submit your trademark application is to determine the basis for filing your application. Your basis for filing is the legal or statutory basis for filing a trademark application. This basis needs to be specified in your trademark application.
The basis for filing could be things such as “use in commerce” or “intent to use in commerce.” You of course must meet the basis for the option you have selected. This means that if you were to select “use in commerce,” then the mark must already have been used in commerce.
If you have not used every single mark in the application in commerce at the time of filing, then you must file under the “intent to use in commerce” basis for filing.
Determine the Form for the Application
Finally, you will want to determine the proper form for your application. Use the Trademark Electronic Application System (TEAS) on the USPTO website to submit your application. There are two different filing options within this system:
- The TEAS Plus; and
- The TEAS Standard.
There are cost differences between these two systems. Each system also has different requirements that are necessary to submit the application.
In general, payments can be made by credit card, an electronic funds transfer, or through an existing USPTO deposit account. This fee will not be refunded even if your trademark application is not ultimately granted. That is because this is a processing fee.
As part of the application process, you need to submit a clearing drawing or depiction of your trademark. This drawing can be uploaded along with your application. The drawing will eventually end up on your trademark certificate.
Determine How Many Marks to Register
You can register multiple marks within the same trademark application. Or, companies can often choose to register various components of a trademark as separate marks. Another company may choose to submit trademark registration applications for its business name as well as the slogan for that business name and the corresponding slogan for the business.
Submitting multiple trademark applications for similar marks can help provide greater flexibility to the company in its promotion across various platforms including print, social media, as well as the company’s own website. This allows for variety in promotion while still ensuring the protection of each mark that is used.
On the other hand, sometimes companies or individuals cannot afford to submit multiple trademark applications. In this case, it can be vital to choose the trademark that is most vital to your overall brand.
Determine the Type of Drawing
There are two types of drawings that can be submitted with a trademark application:
- Standard character drawing; and
- Special form drawing.
A standard character drawing is a drawing that shows the text of a trademark only, and the text is displayed in no particular font, color, or size, An example of a standard character drawing are brand names such as Nike or Walmart.
A special form drawing is a drawing that shows a mark with a specific stylization, graphic, logo design, or color. An example of a special form drawing is the Nike text overtop the swoosh drawing.
You are required to choose which type of drawing you want for each application. This means that choosing the standard character drawing will provide you the broadest form of protection because the ultimate trademark will cover the word rather than only that word within a specific font or format.
A special form drawing, on the other hand, will grant protection only for the specific depiction submitted.
Monitor the Trademark Application
The USPTO has a database called the Trademark Status and Document Retrieval (TSDR) system. The TSDR allows you to monitor the progress of your application. It is important to do this monitoring on a regular basis, as you are responsible for keeping track of the status of your application.
At a minimum, the TSDR system must be monitored every six months, or else you may miss an important filing deadline. You should also be sure to update your mailing address and email address if these things change.
Review by the USPTO Examining Attorney
After you have submitted your trademark application, it generally takes around three months for your application to be initially reviewed by a USPTO examining attorney.
This assignment is made once the USPTO has determined that your application meets what it calls the minimum filing requirements. Your application is then given a serial number and assigned to a specific examining attorney.
Your assigned examining attorney will review your trademark application in detail to determine whether it complies with all of the necessary rules and statutes. The examining attorney will also conduct searches for related and potentially conflicting trademarks. This process requires a detailed review of the written application and the drawing.
Receiving and Responding to Office Actions
Your examining attorney may submit office actions to you during the course of this process. Office actions are official communications sent to you from the USPTO seeking additional information or explanation regarding your application.
The office action may ask for clarification on a drawing or diagram that you have submitted, or to provide greater details on the trademark’s use or intent to be used.
You will have some time to respond to these office actions. Typically you will have six months to submit a response to a USPTO office action. You will want to make sure your responses are timely because an application will be considered abandoned if it is not responded to within the six-month deadline.
You also need to make sure they are thorough and that they efficiently respond to the underlying question. It can be very helpful to have an intellectual property attorney help you with these office actions to make sure you are submitting the best response possible. This will set your application up for the best success possible.
Costs for Registering a Trademark
- $250 application fee per class of goods/services under TEAS Plus;
- $350 application fee per class of goods/services under TEAS Standard.
From there, after a mark registers, maintenance fees can run from $125 to $425.
Receiving Approval and Registration of Your Trademark
Once a trademark application has gotten through any potential objections raised by the examining attorney, the examining attorney will approve the mark for publication. The mark will then be published in a publication called the “Official Gazette.”
The Official Gazette is a weekly publication issued by the USPTO. This publication gets sent out to all those with registered trademarks, so you will receive this once you have received an official trademark registration.
Certificate for Use
If you have submitted a trademark under the “use in commerce” basis, you will receive a certificate for your trademark so long as no one submits any opposition to your published trademark. This certificate will include the type of use of the mark, as well as the depiction you submitted with your application.
Once you have received your certification of registration, as the owner of the mark you will need to file certain maintenance documents to ensure the trademark registration maintains its validity.
Notice of Allowance
If you have submitted a trademark application for an “intent to use” trademark, then you will receive a notice of allowance once your application is approved. This notice of allowance is issued around 8 weeks after the trademark has been published in the Official Gazette.
This notice of allowance is not actually the registration of the trademark. Rather, if you receive a notice of allowance then you will have six months to either:
- Use the mark in commerce or submit a statement of use to the USPTO; or
- Request from the USPTO a 6-month extension to file a statement of use.
If these are not completed timely, then your trademark will be considered abandoned.
Specific Types of Trademark Registration
Next, we will look at the specific types of trademarks you may be interested in registering for use of a mark.
How to Trademark a Business Name
If you are looking to trademark your business name, you will probably want to submit a word mark using a standard character drawing of your business name. This means you should seek broad protection for the name of the business rather than any specific logo or slogan of that business. This will provide the greatest protection of your business name in the market.
How to Trademark a Product Name
Similar to a business name, it can be very important to obtain a trademark for your product’s specific name. Product recognition is key to ensuring increased market share for your particular product. Submit a word mark with a standard character drawing for your product name alongside the trademark application to ensure the broadest protection for that name, as opposed to just obtaining a trademark for a specific design.
How to Trademark a Band Name
If you are a member of a band or a representative of a band, it can be vital to obtain trademark registration for the band name. This will help ensure you solidify your group’s name in the minds of those listening to the music. To trademark your band name, submit a word mark with a standard character drawing for your band name alongside your trademark application. This will allow you to receive broad protection for your band name on a nationwide scale.
How to Trademark a Quote, Slogan, or Saying
Businesses often want to trademark a quote, slogan, or saying that is regularly used alongside their business or product. Quotes and slogans can be trademarked alongside your business name trademark.
This means that if you already have the quote, slogan, or saying ready when you submit your trademark application for your business name, you can also seek to trademark the slogan or quote at the same time.
This will just increase the cost of your application, as you must pay a fee for each trademark you submit. If you want to obtain a trademark for a stand-alone quote, slogan, or saying, you can also submit this as a standard character drawing.
How to Trademark a Book Title
Trademarks can also be received for a book title. These can be submitted like any other trademark application, with a standard character drawing of simply the book title. Note that it is not possible to register the trademark of a single book title. However, a trademark can be obtained for a series, or when the book title refers to a suite of products you offer under that name.
How to Trademark a Hashtag
In today’s internet culture, hashtags have become more prominent and important than ever. You can seek a trademark for a hashtag. Like slogans and sayings, you will want to submit a standard character drawing with your trademark application to ensure the broadest legal protection for your hashtag.
Challenges to Your Trademark Application
There can be challenges made to your trademark application during the approval process. Sometimes other businesses will submit oppositions to your trademark application or else request an extension to submit an opposition.
These oppositions or requests for extensions must be submitted to the USPTO within 30 days from the date the trademark is published in the Official Gazette.
An opposition is held in front of the Trademark Trial and Appeal Board (TTAB). This is a similar proceeding to one in a federal court, but the TTAB is instead an administrative tribunal that is a part of the USPTO.
Because these oppositions can be submitted, it is important to continually monitor your application status online between the time you submit your trademark application all the way up to the time you receive the trademark certificate.
Maintain Your Trademark Registration
Once you have received approval for your trademark and obtained the certificate of registration, it is important that you maintain that trademark registration. Trademark maintenance requires that you file specific maintenance documents with the USPTO.
If you fail to file these maintenance documents, the USPTO will either cancel the registration or will cause the registration to expire.
Once a registration has been canceled or expired, the only option is to file an entirely new trademark application. This means you will have to begin the entire process from the beginning.
Moreover, and very importantly, it is not guaranteed that the trademark will be issued again even if it has been previously issued to you by the USPTO. All of this to say, it is very important that you keep up with any required maintenance filings and fees.
Protecting Your Trademark Rights
Once you have obtained your trademark, you are the one responsible for enforcing those rights. The USPTO does not police the use of your mark and will not aid in any enforcement against a potential infringer.
This means you will want to consult an intellectual property attorney if you find a competing use of your trademark within the market. An intellectual property attorney will be able to give you the best advice regarding how strong of a case you have against the infringer and the pluses and minuses of enforcing your legal rights.
Your intellectual property attorney can also assist you in drafting an appropriate cease and desist letter to the infringer which will hopefully cease the infringing use.
Registering a Trademark Overseas
Federal registration of a trademark with the USPTO is not valid outside of the United States. If you wish to utilize your trademark beyond the United States, you will want to look into the Madrid Protocol.
The Madrid Protocol is a single application, also referred to as an “international application,” that is filed with the International Bureau of the World Property Intellectual Organization, through the USPTO.
Some countries will recognize a USPTO trademark registration as a basis to file trademark applications within the specific country under certain international treaties.