When you have a mark you want to protect, it can be important to register it with the United States Patent and Trademark Office (USPTO) to ensure you maintain your trademark rights as you use the mark.
How to Register a Trademark
While there are certain underlying common law rights as explained below, it is helpful to seek trademark registration from the federal government to get the best protection possible for your goods and services. To register a mark for your goods and services is a clear process to be followed and is governed by United States law. The Patent and Trademark Office (USPTO) website has some helpful tips and tricks as you begin this trademark registration process.
Make a Decision about the Mark
The first step to register is to settle on the specific mark that you will be seeking an application for to protect your goods and services. Make sure you love the specific name, logo, and/or mark that you want to register.
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
Be sure to consider the mark format as well as you register. There are three types of mark formats you can use to register:
- Standard character mark;
- Stylized/ design mark; or a
- Sound mark.
These are described in more detail below.
Determine Eligibility for Federal Registration
For a mark to be eligible for federal registration, it must be used in the ordinary course of trade in commerce for goods and services. This means the mark cannot be registered simply to reserve the right to the mark.
This means that to be classified as “use in commerce,” the mark 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 goods and services. These goods and 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 rights. 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 continue to register a mark or if you should start brainstorming new mark ideas.
Mark searches can be conducted using the 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 trademark registration from being turned down 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 a similar mark that you may not be able to uncover yourself.
Determine the Appropriate Classification for Your Mark
The next step is to familiarize yourself with the 45 different classes used to split up trademarks into various categories. Study the intricacies between the classes that pertain to your mark 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 mark will fit into more than one. The Trademark ID Manual can be helpful as you make the classification determination for the goods and services that you are offering under your mark.
You can even search through this ID Manual and find tips for the best classifications.
Determine the Basis for Filing
Another thing that is important to do before you submit your application is to determine the basis for filing your application. Your basis for filing is the legal or statutory basis for filing an application. This basis needs to be specified in your application.
The basis to register 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 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 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 mark. This drawing can be uploaded along with your application. The drawing will eventually end up on your mark certificate.
Determine How Many Marks to Register
You might want to register multiple marks within the same application. Or, companies often try to register various components of a mark as separate marks. Another company may choose to submit mark registration applications for its business name as well as the slogan for that business name and the corresponding slogan for the business.
Submitting multiple mark applications for a similar mark 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 mark applications. In this case, it can be vital to choose the mark that is most vital to your overall brand.
Determine the Type of Drawing
There are two types of drawings that can be submitted with an application:
- Standard character drawing; and
- Special form drawing.
A standard character drawing is a drawing that shows the text of a mark 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 trademark protection because the ultimate mark 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 trademark protection only for the specific depiction submitted.
Monitor the Application
The Trademark Status and Document Retrieval (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 6 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 Examining Attorney
After you have submitted your trademark application, it generally takes around three months for your application to be initially reviewed by an 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 attorney.
Your assigned attorney will review your 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 an Office Action
Your examining attorney may submit an office action to you during the course of this process. These actions are official communications sent to you seeking additional information or explanation regarding your trademark 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 statement of use or intent to use.
You will have some time to respond to these office actions. Typically you will have six months to submit a response to a United States Patent and Trademark Office (USPTO) 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 trademark application up for the best success possible.
Costs for Registering a Mark
There are costs associated with submitting an application and receiving a certificate of approval for the mark. Trademark applications costs vary depending on the type of application:
- $250 application fee per class of goods or services under TEAS Plus;
- $350 application fee per class of goods or services under TEAS Standard.
From there, after a mark registers, maintenance and filing fees can run from $125 to $425.
Receiving Approval and Registration of Your Mark
Once an 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 mark registration.
Certificate for Use
If you have submitted a mark under the “use in commerce” basis, you will receive a certificate for your mark so long as no one submits any opposition to your published mark. 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 mark 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 mark 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 then you will have six months to either:
- Use the mark in commerce or file a statement of use; or
- Request from the USPTO a 6-month extension to file a statement of use.
If these are not completed timely, then your mark will be considered abandoned.
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 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.
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 Registered Trademark
Once you have received approval for your trademark and obtained the certificate of registration, it is important that you maintain that trademark registration. Registered trademark maintenance requires that you file specific maintenance documents.
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 application. This means you will have to begin the entire process from the beginning.
Moreover, and very importantly, it is not guaranteed that the registered trademark will be issued again even if it has been previously issued to you. All of this to say, it is very important that you keep up with any required maintenance and filing fees.
Protecting Your Trademark Rights
Once you register a mark, 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 rights.
Your intellectual property lawyer can also assist you in drafting an appropriate cease and desist letter to the infringer which will hopefully cease the infringing use.
How to Register Your Trademark Overseas
Federal registration of a trademark is not valid outside of the United States. If you wish to register 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.
Some countries will recognize a registered mark as a basis to register applications within a specific country under certain international treaties.
