A Guide to Federal Trademark Registration
Your product or service's name is crucial to your successful small business. Business owners can gain several significant legal protections a state registration does not provide once you register your mark as a registered trademark with the United States Patent and Trademark Office (USPTO).
There are a few types of trademarks based on what you are trying to protect. Whether you are trying to trademark your brand name logo or protect the name of a service you provide (service mark), you will want to ensure a seamless application process.
Below is a step-by-step guide to applying for federal trademark registration.
Determine If You Need a Trademark
The first step in the trademark registration process is deciding if you should register your mark in the first place. There are many exclusive rights associated with getting registered. Most importantly, you can file a lawsuit against anyone who uses your trademark without your permission, including counterfeits.
You can register your mark with the secretary of state in the state(s) in which you operate. This will notify others of your legal rights to the mark in that state.
A federal trademark allows you to use the "®" symbol beside your brand. This symbol helps to warn others against using it and that it is a federally registered trademark.
You can also sell and license your brand to others, which can be lucrative.
Perform a Trademark Search
This is the most important step in this process. Performing a trademark search is key to ensuring you aren't stealing anyone else's company name or likeness. Check if your trademark is already registered. Use the USPTO's Trademark Electronic Search System to perform trademark searches.
Having a similar name to established registered trademarks will cause trademark infringement issues. The name can be similar in sound, spelling, or even idea. For example, "The Three Amigos" may infringe on the trademark of "Los Tres Amigos" because three in Spanish is "tres." Examiners use the likelihood of confusion test to determine if your mark would confuse consumers.
You'll want to perform a trademark search before you send in your application. Considering the complex search parameters, you should have an intellectual property attorney do the search and analysis.
If you find that someone already owns the trademark you want to use, you can ask the existing holder for permission to register yours. Before you do that, consult with an attorney specializing in intellectual property.
Identify the Correct Class of Goods and Services
Select the right class of goods or services for your trademark. The USPTO provides a list of the different classes to guide you in choosing the right one. Make sure you choose all of the classes for your product or service. Each class requires its own fee.
File a Federal Trademark Application
The most time-sensitive part of the trademark process is filing the federal trademark application. The USPTO has an online system to file your application known as the Trademark Electronic Application System (TEAS).
Your trademark application must include the following elements:
- Name of the applicant
- Name and address for correspondence
- A clear drawing of the mark
- Listing of the goods or services
- Filing fee for at least one class of goods or services
If your application does not meet these requirements, the USPTO will return the application. They will not refund any fees submitted.
After You Submit the Application
After you submit your application, it will be time to play the "waiting game." A clerk will assign a number to your case, and then it will go through a review process.
A trademark examiner, a licensed trademark attorney for the USPTO, will review your application. If they have questions or need you to provide more information, they will send you an office action. You will need to respond to office actions by the deadline given.
If the examiner determines your application has no issues confusing consumers with an existing trademark, then your mark is published in the USPTO Gazette for 30 days. This allows others to oppose your trademark if they believe it infringes on their registered trademark.
If someone objects to your trademark for infringement, consider hiring legal help to resolve the dispute or appeal the decision.
Maintain Federal Trademark Registration
If your application does get approved, the work doesn't stop there. You'll need to follow several steps to maintain your trademark registration. Trademarks typically last for 10 years, but be sure to confirm the current state of the law.
Helpful Resources for the Application Process
Here are some key resources every future trademark owner can use to help trademark their business and make it a seamless process.
- Guide to How to Register a Trademark: FindLaw's Guide to How to Register a Trademark [PDF] offers an overview of obtaining and registering a trademark over your goods.
- Key Questions To Ask Before Filing Your Trademark: FindLaw's Trademark Questions to Ask form [PDF] is a comprehensive list of key questions to assess before filing your trademark or service mark with the U.S. Patent and Trademark Office.
- State-Specific Trademark Protection: FindLaw has curated a list of State-Specific Trademark Protection Information to help with state enforcement trademark FAQ.
- Overview of Identification of Specific Goods and Services: FindLaw's article on Identification of Specific Goods/Services provides an overview of which specific goods or services to select and how they apply to your trademark application.
- Interesting Facts About Business Names and Trademarks: If you are curious about trademarks and want more fun facts, read FindLaw's Interesting Facts About Business Names and Trademarks.
Getting Legal Help With Your Trademark Application
Trademark law is complex. Getting legal advice from an attorney with the trademark application process is highly advised. A skilled lawyer can help review trademark basics, like filing fees, trademark maintenance, and other trademark registration issues.
Having a trademark as part of your business plan is critical to an entrepreneur's success. Contact an experienced trademark attorney in your area for more information. For more information about the different types of intellectual property, visit FindLaw's Intellectual Property section.
You Don’t Have To Solve This on Your Own – Get a Lawyer’s Help
Meeting with a lawyer can help you understand your options and how to best protect your rights. Visit our attorney directory to find a lawyer near you who can help.
Contact a qualified business attorney to help you identify how to best protect your business' intellectual property.