Imagine making your logo, name, or slogan an official mark! Creating something special and securing it with a federal trademark gives your brand and business the protection and competitive edge it needs. Trademarks act as powerful assets that identify your brand, and set your products and services apart from the crowd.
Ready to Register Your Brand?
We’ll break the process down into bite-sized pieces, from ensuring originality to federal approval and maintenance, and you’ll be on your way to adding a shiny new trademark to your business arsenal—all without breaking a sweat.
How Trademark Registration Works
Trademark registration is a legal process that grants a business exclusive rights to use a specific name, logo, or symbol to identify its goods or services. This protection helps prevent others from using a similar mark that could confuse consumers. Registering a trademark provides legal recourse against infringement and can establish a company’s reputation and trustworthiness in the marketplace. It also enables businesses to expand their brand through licensing or franchising.
While the process can be complex and require adherence to specific legal standards, the long-term benefits include safeguarding your intellectual property and building up brand loyalty—so it’s worth the effort.
Guide to Applying for a Trademark
1. Check for originality and strength.
Originality
Originality is everything—so it’s crucial to conduct a search for any likelihood of confusion, which exists when similar trademarks result in probable consumer confusion as to the source of goods or services. You don’t want to spend time and money only to find out someone else beat you to the punch, and potentially land yourself in hot water later with legal challenges or rebranding headaches.
To help make sure your trademark is unique within your industry, you’ll start with a clearance search. This thorough search technique means starting with a general search engine like Google, then digging through the proper sites and databases:
- USPTO’s Trademark Electronic Search System (TESS). This user-friendly (and free) tool lets you see if anyone else is already using something similar. You’ll get all the details of any similar marks, such as status and class. Look out for any trademarks that are phonetically similar or have similar visual elements. If your search comes up empty, you’re on the right track.
- Trademark Official Gazette (OG). This lesser-known but super important tool in your trademark toolkit is published weekly by the USPTO, and is where newly registered trademarks are announced. By keeping an eye on the OG, you can spot potential conflicts with your desired trademark.
- State trademark databases. Some trademarks are registered at the state level. Each state has its own database, usually managed by the Secretary of State’s office. A quick search here can reveal any local trademarks that might not appear in the USPTO database.
- Domain registries. Head over to the big name domain registrar sites to see if your desired domain name is available. If someone else owns the domain name, they might already be using it as their brand name.
- Social media. Many businesses use social media platforms as part of their branding strategy. If your name is taken, you’ll likely find it here.
Found a trademark similar to yours? Look closely at the existing trademark and consider:
- Similarity in appearance, sound, or meaning: Is your trademark similar in a way that could confuse consumers?
- Relatedness of goods or services: Are the goods or services provided under the existing trademark similar to yours?
- Overall commercial impression: Does your trademark create a similar impression to the existing one?
If the existing trademark is only slightly similar and the goods or services are quite different, you might still have a shot.
Strength
Choosing a strong trademark is one of the best things you can do to protect your brand. A strong mark not only helps your company stand out, but it adds muscle to your trademark rights.
Trademark strength is split into five levels. Moving from strongest to weakest, these include: fanciful, arbitrary, suggestive, descriptive, and generic.
Strong trademarks are better protected than their weaker counterparts because of their distinctiveness. The more creative and distinct your trademark is, the better it acts as a “source identifier” for your goods or services—and the easier it is to claim as yours.
If a trademark is too weak to act as an identifier, it can’t be registered by the USPTO.
2. Choose the right trademark class
Now that you’ve taken care of the preliminary research, you’re ready to define the scope of your trademark protection by selecting the right trademark “class.” This is where things get a bit technical.
Every trademark falls into one or more of these different class categories. Choosing the right class is crucial because it defines the scope of your trademark protection. These classes group similar goods or services together—and there’s 45 classes. The first 34 classes are for goods (think tangible products), and the remaining 11 are for services (things you do for others).
Here are some examples to paint a clearer picture:
- Class 25: Clothing, footwear, headgear
- Class 30: Coffee, tea, cocoa, sugar, rice
- Class 35: Advertising, business management, office functions
Choosing the right class means taking a look at your core offerings as well as where your business might expand in the future. If you’re starting with coffee but plan to branch into pastries, you might want to cover both Class 30 and Class 43 (for restaurants and cafes).
Always consult the experts on guidance if you’re unsure, and use the official USPTO website for the most up-to-date and accurate information.
3. Determine your filing basis
Your filing basis is the legal reason for your trademark application. Your selection indicates which portion of the Trademark Act allows you to apply for registration—but don’t worry, this bit isn’t as technical or research-heavy as the last couple steps. The USPTO offers two main filing bases for trademark applications: “Use in Commerce” and “Intent to Use.” Let’s break these down.
Use in Commerce
If you’re already using your mark in the marketplace, you’ll file under “Use in Commerce.” This means you’ve got your product out there, people are buying it, and your mark is being used to sell or advertise it. It’s the real deal, happening here and now. To file under this basis, you need to provide the USPTO with:
- A specimen showing your mark in use (like a photo of your product packaging or a screenshot of your website).
- The date of first use anywhere.
- The date of first use in commerce.
Think of it this way: “Use in Commerce” is for when your trademark is already doing its thing in the real world.
Intent to Use
On the other hand, if you’ve got big plans but aren’t quite there yet, you’ll file under “Intent to Use.” This means you haven’t started using your mark in commerce, but you have a bona fide intention to do so.
When you file under “Intent to Use,” you don’t need to provide an instance right away. Instead, you’ll submit it later, once your mark is actually in use. The USPTO will issue a Notice of Allowance, and you’ll have six months (with the possibility of extensions) to show the mark in use.
4. Fill out the right application
The USPTO’s online application form is your next stop, and you’ll need to know which application to pick. The USPTO offers two main types: Trademark Electronic Application System (TEAS) Plus and TEAS Standard. The difference between these two applications comes down to a few main points:
- Goods/services description. If you go with TEAS Plus, you’ll need to pick your goods or services description from a list of pre-approved options in the Trademark ID Manual. There are lots of choices, and this works great for the majority of people. That being said, your goods or services might be so unique that none of the pre-written descriptions fit. That’s when TEAS Standard comes to the rescue, letting you write your own description from scratch.
- Cost. TEAS Plus costs $250 per class, while TEAS Standard costs $350 per class.
- Additional requirements. When you submit a TEAS Plus application, all applicable fields must be filled out, such as an English translation if your mark is in a foreign language or a written description of a design mark. The TEAS Standard application allows you to skip these fields and respond later.
5. Pay the fee and submit your application
When it comes time to pay the piper, the cost depends on a few factors, such as how many classes you’re registering and which application form you use. Typically, fees range from $225 to $400 per class. Make sure to check the latest fee schedule on the USPTO website.
After you submit your application, it’s time to hurry up and wait. Don’t expect an overnight response—the review process can take several months. During this period, a USPTO examining attorney will review your application and may ask for additional information or clarification. If all goes well, the USPTO will email you a link to your digital certificate of registration.
6. Respond to Office Actions
If the USPTO finds any issues with your application, you’ll receive an Office Action. Don’t panic—these responses are simply a letter from the examining attorney outlining any issues with your application. There are two main types:
Non-Substantive Office Actions:
These are usually minor and can include things like:
- Minor errors in your application
- Missing information
- Clarification needed on the goods or services listed
How to handle it: For non-substantive office actions, you’ll need to correct the errors and provide any missing information. The USPTO will typically give you six months to respond. Make sure to address every point they raise, and submit your response through TEAS—a simple but crucial fix.
Substantive Office Actions:
These are more serious and can include:
- Likelihood of confusion with an existing trademark
- Descriptiveness or genericness of the mark
- Other legal issues that need addressing
How to handle it: Substantive office actions require a bit more elbow grease. You’ll need to carefully address each issue raised by the examining attorney. This might involve:
- Providing arguments and evidence to support your case
- Amending your application
- Possibly seeking help from a trademark attorney
In some cases, you may need to file a request for reconsideration or appeal the decision to the Trademark Trial and Appeal Board (TTAB). It’s a bit of back-and-forth, but stay patient and responsive.
6. Maintain your mark with periodic filings, increased protection, and infringement monitoring
You’ll receive a registration certificate, and your trademark will be officially recognized. This gives you the exclusive right to use your trademark in connection with your goods or services.
Remember, this isn’t a set-it-and-forget-it deal. Maintaining your trademark is just as important as obtaining it, and you’ll need to maintain your mark by filing periodic documents and fees to keep it active. These can include:
- Declaration of Use (between the 5th and 6th year). This is a statement confirming that your trademark is still in use—basically letting the USPTO know that your brand is alive and kicking.
- Section 15 Declaration (after 5 continuous years of use). Once your trademark has been in continuous use for five years, you can file a Section 15 Declaration to make your trademark incontestable. This provides additional legal protection against challenges.
- Combined Declaration of Use and Application for Renewal (every 10 years). To keep your trademark registration active, you must file a combined Section 8 and 9 Declaration every ten years. This ensures that the USPTO knows your trademark is still in use and relevant. Missing these deadlines can result in your trademark being canceled—so mark this event on your calendar.
Trademark monitoring is most successful if done regularly throughout the life of your trademark. You’ll dig through the same kinds of sites and databases you did during your clearance search. You can monitor your trademark yourself or you can hire a trademark monitoring service, which uses software to do this legwork for you.
If you discover trademark infringement, your options depend on the circumstances, like the extent of infringement and when it was discovered. Infringement remedies include cease and desist letters, suing in court, petitioning to cancel the infringing mark, or filing an “opposing a trademark” application. It may be helpful to talk to a trademark attorney about your options.