The United States Patent and Trademark Office (USPTO) provides a pathway for any individual or business to register a trademark for use in interstate commerce, or trade which takes place across state lines, as well as for territorial or foreign commerce. But just what are the steps to federal trademark registration, and what can you expect during the process?
What is a trademark?
A trademark is a type of intellectual property which identifies and distinguishes your business and its products or services to the public. This could consist of a name, a logo, an image, even a sound (think of the NBC chime, or the roar of the MGM lion).
Trademarks are distinct from patents, which protect ideas, inventions, and technology from unauthorized manufacturing or sale by anyone other than the patent holder. Copyright and trademark are also not the same thing, since copyrights protect individual artistic works or media productions such as books, music, films, and so on.
It’s important to note that the USPTO does not enforce intellectual property protections. It is up to the trademark, patent, or copyright owner to do so. However, registration will provide you with the legal protections necessary to mount a successful challenge to infringers, either administratively, or in court if necessary, ideally with the help of a trademark lawyer.
What are the types of trademarks?
There are three broad types of trademarks, along with a wide number of classes of goods and services. The main types of trademarks include:
- Standard character mark – for standard words, letters, numbers, or combinations without special formatting, font, or design elements.
- Special character mark – for marks with special design elements or stylized words, letters, or numbers in a particular arrangement, font, color, or typeface.
- Sound mark – as mentioned above, any mark that includes a unique sound among any other visual character or design elements.
Beyond those general trademark categories, the USPTO recognizes 45 “classes,” or types of goods or services, including 34 product classes and 11 service classes.
Should I get a trademark or LLC first?
Deciding whether to trademark your company’s products or services, or to form an LLC or other type of legal business entity first, is something you will have to decide based on your immediate business needs. Trademark registration takes an average of nine months or longer, with potential time frames running much longer if there are any issues or disputes with your application. Registering an LLC or a sole proprietorship can be done within 1-3 days, and filing the paperwork to form an S or C-corporation can also happen relatively quickly.
If you plan to start selling your goods and services right away, it makes sense to get an LLC first, then begin the process of filing for trademark registration. However, if your offering is heavily reliant on your particular trademark for recognition, and you have a concern about someone else using a mark substantially similar to yours, or even registering it with the USPTO before you, you should consider filing to register a trademark first.
Under common law, anyone is permitted to begin using any type of mark they like when selling their goods or services. In fact, it behooves you to begin doing this before filing to register a trademark, since one of the requirements for registration is showing “use in commerce.” You may also apply for an “intent to use” (ITU) trademark if you are not already using the mark in commerce. However, there are additional documentation and fee requirements involved in showing intent to use.
Steps to trademark your company name
There are a few specific steps that everyone must follow in order to register a trademark, and we recommend working with a patent and trademark attorney to complete this process, since applications submitted via trademark attorneys have a 50% higher rate of acceptance. If you are foreign-domiciled and applying for U.S. trademark registration, you must be represented by a U.S. lawyer before the USPTO.
The USPTO offers a free, public resource called the Trademark Electronic Search System (TESS) for prospective applicants to search for other trademarks either registered or pending registration that may be confusingly similar to their own. The TESS is not the final word on all trademarks, as some marks may be in use in commerce and not registered, registered in other countries, or appearing in other databases. In addition, there are other considerations that must be taken into account to perform a comprehensive trademark search.
Conduct a comprehensive trademark search, with the help of a trademark attorney if possible, to make sure that the trademark you want is available.
You will need to gather the following information in order to begin preparing your trademark application:
- Filing basis – use in commerce, intent to use, or existing foreign registration/application;
- Class(es) of goods and services – everything you wish to sell under a given mark, classified and described under the relevant class of goods or services;
- Drawing & specimen – a visual representation of your mark, along with a physical example of your mark how you intend to use it in commerce;
- Application fee – ranging from $250-$350 depending on product class, filing basis, and other factors;
- Basic information – such as name of person or business applying for registration, contact info, etc.
File your application using the USPTO’s Trademark Electronic Application System (TEAS), using either the Plus or Standard application. TEAS Plus applications tend to be processed and approved much faster, and have a lower rejection rate. However, you will have to use TEAS Standard, and pay a higher fee per class, if you use a custom description rather than the approved standard descriptions that PLUS provides.
After filing, you will receive a serial number which you can use to track your application during the registration process. A USPTO examining attorney will review your application, and if there are no issues or objections to your mark, it will be published in the weekly “Official Gazette” of the USPTO. Anyone who wishes to file opposition to your mark or extend the time to file an objection has a 30-day window to do so.
If there are any issues with your application’s processing, the examining attorney will issue an Office Action listing the reasons for denying the application. If the issues are minor, they may contact you via phone or email to help resolve them.
Maintain Your Trademark Registration
Trademark registration does not remain in force indefinitely, and must be renewed every ten years. In addition, you must file a Declaration of Use between the 5th and 6th year from registration. There are also other requirements for documentation and proof of continued use of the mark which registrants must adhere to in order to maintain the registration. Third parties may also challenge your registration or claim non-use if your mark is not in regular use in commerce.
Remember, you must enforce your own rights to protect your trademarks and other intellectual property. Registering a trademark is an important first step, but ensuring that others are not infringing on your rights is an ongoing process which requires attention and dedication on the part of trademark owners.
Contact a Trademark Attorney
Our board-certified, experienced patent and trademark attorneys at Allen Dyer can help you with any questions about how to register a trademark or the trademark application process. Contact us to schedule a consultation today!
About the Author
Matthew McKinney practices in all areas of intellectual property, representing a wide range of clients in connection with the acquisition, transfer, enforcement and defense of their intellectual property rights.