How to Register a Trademark
Registering your trademark should be a top priority for every business. Even smaller, regional companies should be proactive about establishing their trademark rights to prevent potentially costly legal ramifications down the line. The many benefits of registering your trademark include:
- The ability to use the registered trademark symbol (®) in association with your registered goods and services
- Presumption of ownership of the trademark and national protection of trademark rights
- Presumption that the trademark is valid
- Public notification of trademark registration to deter infringers
Trademarks can be registered directly on the United States Patent and Trademark Office (USPTO) website. Registering your trademark will require you to complete an application, as well as submit an application fee. You will also be required to respond swiftly to any office actions or oppositions filed against you during the process of registration.
Application fees are non refundable, so you will want to do everything you can to ensure your registration will not conflict with an existing trademark before you submit your trademark application. A trademark attorney can make this process significantly easier by assisting with your application and researching existing trademarks that might conflict with your own.
Step One: Select a Strong Trademark
Before starting down the road to registration, consider whether your trademark is even eligible by USPTO’s standards. A trademark that is too generic, for instance, will not qualify for registration. This is in fairness to other businesses. For example, if “The Shoe Store” were federally registered, it would unfairly restrict other companies from marketing their footwear.
Similarly, descriptive trademarks are often entitled to a lower level of protection. This includes trademarks that include proper names, such as “Sherry’s Book Store.” If your trademark falls into one of these categories, consider selecting a stronger trademark for registration. Otherwise, you might waste time and energy on an application that is unlikely to ever be approved by an examining attorney.
The strongest trademarks fall into three categories:
- Fanciful: Fanciful trademarks are widely considered the strongest kind of trademarks. These are words that have been invented solely to be used as a trademark. Think Kodak or Xerox.
- Arbitrary: Arbitrary trademarks take an unrelated word or phrase and apply it to their products in an unexpected way. For example, “Dove” as a personal care brand.
- Suggestive: Suggestive trademarks hint at the nature of the products or services being sold, without the connection being immediately obvious to the consumer. A well known example would be Netflix, which is suggestive of an online streaming service.
You should ensure you have a strong trademark before investing significant time and money in marketing or web development. Once you have selected your perfect trademark, you will need to make sure that it does not conflict with an existing trademark before registering.
Step Two: Conduct a Trademark Search
Your next step will be to conduct a trademark search on your desired trademark. You can use the USPTO’s free online search engine to do this. The Trademark Electronic Search System (TESS) will clue you in if another registered trademark conflicts with your own.
Unfortunately, it’s not as simple as typing in your desired trademark and hitting the enter key. You will also want to try out alternative spellings, or include special characters in your search, to ensure you don’t miss a trademark that might be confusingly similar to your own. Keep in mind that if a trademark sounds like your own, or has a similar connotation, it might be deemed too similar even if the spellings are different.
You will also want to widen the breadth of your search beyond TESS. Unregistered trademarks still are afforded some degree of protection under common law trademark rights. During the period of opposition, unregistered trademark owners can still oppose the registration if they can provide proof they were using the trademark first. Therefore, you will want to expand your search beyond the USPTO website. Conducting a Google search could alert you to other protected trademarks similar to your own. You can also use sites like Name.com to identify domain names that contain your trademark.
Most companies use trademark attorneys to conduct searches before registration to ensure that they don’t miss any red flags. Because the act of applying for registration can be the first step toward infringement, it can be a smart choice to have a trademark attorney handle this process for you.
Step Three: Submit the Trademark Application
You can submit a trademark application on the USPTO site. The government filing fee for a trademark application is $225 per class of goods/services. The application will require you to provide the following information:
- Contact information of the trademark owner
- The types of goods and services you plan to use in association with your trademark
- The desired trademark, along with any stylized usages
- A specimen that proves your trademark is currently being used in commerce. This could be a sample from your website or an advertisement.
Trademarks can only be registered if they are currently being used in commerce. If you want to protect a trademark for future use, you would need to file an intent-to-use application with the USPTO. This may be an advantageous move, as it could give you an earlier filing date than a competitor, and thus give you priority of usage in the future.
Once you have filed the application, the application will be reviewed by an examining attorney. It typically takes examining attorneys about four months to review a trademark application.
Step Four: Respond to Any Office Actions or Oppositions
Once a trademark application is reviewed, you will hear back from the examining attorney. At this time, you will be notified if there were any issues with your application. This could be a problem with the information provided on the application, or a conflict with an existing trademark.
Responding to an office action might be as simple as a quick call with the examining attorney to make a small correction or clarification. Other issues will require you to respond via the Trademark Electronic Application System (TEAS). Your office action will give details about how to respond to your specific issue. In order for a response to be considered timely, it would need to be submitted within six months of receiving the office action.
If you notice that your desired trademark is confusingly similar to an existing trademark, you should reconsider your trademark in order to save you further problems down the road. However, if you have already devoted significant time and money into marketing your trademark, you might consider other options. For example, you could change the wording of the trademark.
If you decide that the registered party is the one guilty of infringement, talk to a trademark attorney about your best options for moving forward with your registration.
Notice of Opposition Period
Once your trademark application has been given the OK by an examining attorney, your trademark will be published for opposition in the Official Gazette, an online USPTO publication. This gives other trademark owners a 30 day window to oppose your application if they believe it conflicts with their trademark rights. Only parties that can prove they have vested interest in the matter can oppose an application.
You will be notified if anybody complains opposes your application. You typically have 30 days to respond to a notice of opposition. Once you have submitted your response, the Trademark Trial and Appeal Board (TTAB) will set a schedule for discovery and other case deadlines. These oppositions can be viewed as micro trials, but they can take months to reach a resolution.
During the opposition, you will be required to comply with all deadlines established by the TTAB and provide necessary documentation for each stage of the case. This can be a difficult task to accomplish without a trademark attorney. If you are unhappy with the verdict reached by the TTAB, you can appeal the decision to the federal circuit, or to the district court with jurisdiction over the issue.
Once the 30 day opposition period has passed, your trademark will proceed toward registration. If somebody wishes to oppose your trademark registration, but they failed to properly file an opposition on time, they may still attempt to cancel your registration.
Step Five: Monitoring and Maintaining Your Trademark
Once your trademark is successfully registered, you can begin using the registered trademark symbol (®). It’s important to note that once your trademark is registered, it is your responsibility to monitor its usage.
You can monitor your trademark by setting up a Google Alert, and keeping an eye on the Official Gazette for pending trademark applications. Monitoring your trademark usage can be an extremely time consuming task. Many trademark owners choose to outsource this task to a legal service or a trademark attorney.
Failing to respond to trademark infringement in a timely manner can take a devastating toll on your business. A confusingly similar trademark may damage your company’s reputation, and other infringing parties might see your lack of response to unauthorized usage as a reason to ignore your rights. If you notice an infringement on your trademark, your first step will be to send a cease and desist letter to the infringing party. This letter informs the other party of your trademark rights, and warns that further legal action will be taken if the infringing activity does not cease.
Trademark rights last as long as the trademark is in use. You will, however, be required to submit regular fees in order to maintain your registration. Between the fifth and sixth year of registration, you will need to submit a Declaration of Use through the USPTO website. Then between the ninth and tenth year of registration, you will again have to submit a Declaration of Use and renew the registration. From then on, you will need to renew every ten years from the registration date. If you fail to regularly renew your registration, your trademark registration will be canceled and you will lose your rights.