What Are the Steps To Getting a Trademark?
Understanding the trademark registration process
on November 14, 2022
If you’re an entrepreneur or small business owner with a company name or logo you want to use, U.S. trademark law is relevant to you.
Trademarks are a type of intellectual property. Trademark owners have legal protection for the symbols, words, or phrases they use to identify and distinguish their business’s goods and services.
Having a trademark not only helps you distinguish your brand, but it also helps consumers identify your brand and build trust.
Trademark protections arise through the use of a trademark symbol.
Trademark is a use-based intellectual property right, [meaning] you don’t technically have to file for trademark registration to obtain trademark protection,” says Boston intellectual property lawyer Rory P. Pheiffer.
Though not strictly necessary, registering your trademark with the United States Patent and Trademark Office (USPTO) will give your trademark legal protections it otherwise wouldn’t have. Registering a trademark puts the public on notice that the trademark is yours and enables you to enforce your trademark rights against infringement.
This article will cover what a trademark is and the general steps to getting a trademark.
What is a Trademark?
A trademark is any symbol, word, or phrase used to identify the goods or services of a company and to distinguish those goods or services from competitors.
In other words, trademarks are brand names. Brand names are everywhere in everyday life, from the Starbucks coffee you drink to the Nike shoes you wear to the iPhone you use.
As a consumer, a brand name helps you know what you’re getting when you make a purchase, whether that’s a certain quality of clothing or a particular beverage you enjoy.
Trademarks also include domain names, helping distinguish websites from one another in cyberspace.
Trademarks help businesses establish a recognized presence in a community or market. In short, trademarks are very important for a company’s brand.
How Do I Come Up with a Trademark?
In many ways, creating a trademark is a matter of personal imagination and preference. What kind of symbol or phrase do you want to represent your business or product?
Nevertheless, there are some important guidelines to be aware of.
First, you want to use a distinctive trademark symbol. How do you know what’s distinctive?
The U.S. Patent and Trademark Office (USPTO) gives some pointers on making a strong trademark. Use a symbol or phrase that is either:
- Fanciful, such as a made-up word or imaginary symbol
- Arbitrary, meaning the word or symbol doesn’t have an obvious connection to the good or service you provide
- Suggestive, meaning that the brand name hints at what your good or service is
You want to avoid trademarks that are merely descriptive or generic.
Second, you want to ensure that your trademark isn’t already being used by someone else.
Trademark law is a first-to-the-post system, meaning the first person to use or register a trademark has a right to the trademark over others who try to use it later.
“If you’re using a trademark in one state and then someone else, later in time, starts using their mark and successfully files for registration… your rights would be limited in scope to where you were originally using the trademark in your state, says Pheiffer. “If you file initially, you can get coverage across the entire country.”
Suppose you end up using a trademark someone else is already using. In that case, you’re infringing on the company’s trademark rights and could be sued.
A trademark search in the USPTO database will ensure you are in the clear. You can use the USPTO’s Trademark Electronic Search System (TESS) to search for similar marks. Searching trademark databases can be complex and time-consuming, so it’s a good idea to consult with a trademark lawyer.
How Do I Get Trademark Rights?
As noted above, a trademark is a use-based intellectual property right. This use-based right was established through common law.
“You start using the mark in conjunction with goods or services, and the public starts associating your trademark with those goods and those services,” says Pheiffer. “That in and of itself creates the trademark. It’s creating in the consumer’s mind that this mark is associated with these goods or services.”
Even though the use of the mark is sufficient to establish trademark rights, there are significant benefits to securing your trademark rights through registration with the U.S. Patent and Trademark Office.
Federal trademark registration gives the owner of the mark certain exclusive rights:
- Puts the general public on notice of your ownership of the mark
- Brings your trademark rights under the legal protection of the U.S. federal court system
- Allows you to take legal action against others for trademark infringement (for example, if someone uses a similar name or trademark symbol)
- Enables you to record your registered mark with U.S. Customs and Border Protection to prevent the importation of products that infringe on your trademark rights
“I advise clients that at the point where they start using a trademark, they should start using the little TM symbol after the trademark,” says Pheiffer.
“The difference between the TM symbol and the ® symbol is with TM, someone is claiming the symbol is a trademark, whereas the ® is an officially registered trademark in the U.S. government,” says Pheiffer.
“So, as an initial matter, I advise clients to use the TM. Beyond that, it’s usually helpful to file. One of the main reasons is that it puts the public on notice.”
In other words, “Once you’ve filed for your trademark in the United States, there is proof. Consumers can’t claim that they didn’t know this trademark didn’t exist,” he says.
If you don’t file, others aren’t put on notice. In this situation, “if you’re just using a trademark in a limited geographical area such as a particular state, someone else might start using your trademark in another state, and then they might file for a registered trademark.”
If they file before you, their trademark “is presumed to be known throughout the U.S,” and you are barred from using the trademark outside your particular region. You might also be at risk of trademark infringement.
Steps to Getting Federal Registration for Your Trademark
The trademark application process generally consists of the following steps:
- Come up with a distinctive trademark that the USPTO will accept
- Do a trademark search to make sure others haven’t already registered the trademark you want to use
- Make an account with USPTO and fill out the initial application using their Trademark Electronic Application System (TEAS)
Depending on the type of trademark you’re filing for, there are a couple of versions of the application form that come with different application fees:
- TEAS Plus (currently $250 per class of goods or services)
- TEAS Standard (currently $350 per class of goods or services)
The application will ask you for critical information about the trademark, including who owns the trademark, the type of goods and services the trademark will be used for, and the type of mark you’re seeking to register:
- Standard character
- Sound mark
- Design mark
The USPTO examining attorney will review your application, asking you questions about the trademark and your use of it. It’s essential to respond to any inquiries promptly and in detail.
If no problems arise in working with the examining attorney, the USPTO will publish your trademark in the Official Gazette. This publication gives parties who think your trademark infringes on their trademark rights the opportunity to file their opposition within 30 days. If there is opposition, the matter is resolved before the Trademark Trial and Appeal Board.
Assuming there is no opposition, or the Appeal Board rules in your favor, the USPTO will approve your application, and you’ll receive a certificate of registration.
Note that for intent-to-use trademark applications, the USPTO will issue a notice of allowance instead of a certificate of registration upon approval.
Pheiffer says intent-to-use marks are helpful “if you think you want to use the trademark with some goods or services, but you’re not offering them for sale yet.”
An intent-to-use trademark “puts your stake in the ground, ensuring you’ve beaten other people to using it, and then you’ve got up to three years to start using that trademark and to continue holding your rights to the trademark,” he says.
“So, if you’ve got a particular brand name or tradename you’re really wed to and really think will be a big hit, there’s a benefit to filing early with an intent-to-use mark to hold your place in line and gain priority on it.”
“And once you start using the trademark, you perfect your interest in it.” At that point, you submit a Statement of Use proving to the USPTO that you’re actively using the trademark and “it moves to a registered trademark.”
How Much Does It Cost to File a Trademark?
One big question when it comes to registering a trademark is how much it will cost.
“Filing fees are about $300. Usually, if you hire a trademark attorney to prepare the trademark application, it runs you somewhere from $500-1,000 plus those filing fees,” says Pheiffer. “So, trademark filing fees usually cost anywhere from $800-1,300 dollars. It’s a fairly low threshold to start protecting your interest.”
Do You Need a Lawyer to File a Trademark?
Drawing on his extensive experience as a trademark attorney, Pheiffer says, “I think it’s good to hire a trademark attorney to handle preparing descriptions of goods and services as well as figuring out what class of goods and services to file under.”
Why is this important?
“I’ve had a number of clients who have filed a trademark initially, didn’t get the goods and services right, didn’t get the right class, and then they come to me after getting rejected, and we had to refile the application,” says Pheiffer.
Refiling is “really the only way to fix an application” that isn’t right, he says.
“At that point, the client feels frustrated because they’ve lost their priority date and have had to pay twice to file the trademark application.”
“So, I think it’s good to engage with an experienced trademark attorney to help guide you through the process and ensure you only have to do it once.”
Questions for a Trademark Lawyer
Most trademark lawyers give free consultations for potential clients, meaning it won’t cost you anything to consult with an expert and get legal advice about your trademark rights.
To get the most out of a consultation, ask informed questions such as:
- What are your attorney’s fees and billing options?
- Will you handle the search for similar trademarks?
- What costs can I expect in the registration process?
- How long will registering my trademark with the USPTO take?
- Once I register my trademark, what do I need to do to maintain registration?
Once you have met with a lawyer and gotten your questions answered, you can begin an attorney-client relationship.
Look for a trademark attorney in the Super Lawyers directory for legal help.