Picture this: A local bakery makes great sourdough bread and sells it through supermarkets. A competitor starts selling sourdough bread with a very similar name. Soon, the bakery’s sales drop as confused customers buy the competitor’s product.
Scenarios like this one unfold frequently around the world. There’s good news: The bakery can prevent this misuse by registering its name as a trademark, so competitors can’t use the same or a similar name.
Like the bakery, you should protect your intellectual property with trademarks, whether you’ve run your business for a long time or are starting a new company.
What is a trademark?
A trademark is an intellectual property — like a word, phrase, logo, or design — registered in a business’s name. Trademarking gives a business exclusive rights to intellectual property and legal protection against misuse.
By registering a trademark, a business is granted certain legal rights and protections in regard to that name. They become, for example, the only entity that can use the trademark; if another person or business tries to use it, the trademark holder has the right to take legal action against them.
For example, the phrase “It’s finger lickin’ goodTM” is a trademark of KFC Corp. Target Corp.’s concentric white-and-red ring logo is another example of a trademark.
Who approves trademarks in the US?
The United States Patent and Trademark Office (USPTO) examines and approves trademark applications. You should file an application with the USPTO to register a name, phrase, design, or sound as a trademark.
Trademark formats
The USPTO accepts trademark applications for three formats:
- Standard characters: Names and phrases that are a combination of plain characters. For example, Just Do ItTM is a trademark of Nike Inc.
- Special form: Logos, stylized names, and designs. For example, the stylized word “Nike” along with its swoosh logo, or the swoosh logo on its own.
- Sound mark: Jingles, boot-up tunes, and other sounds.
If you choose the standard characters format, you’ll get the broadest protection since you aren’t limiting the font, style, or color. But if you register a special form, only that particular form will be trademarked.
So, when do you need to register something in a special form?
You need a special form trademark to protect your designs and logos. Also, you need to go for a special form if you intend to trademark names or phrases with nonstandard characters, like:
- Underlining
- Subscripts
- Superscripts
- Emoticons
- Exponents
Now, let’s explore the steps of federal trademark registration.
Note: You don’t need an attorney to file a trademark application if you live in the US. But a trademark attorney can give you legal advice at different stages of the registration process, like the clearance search, preparation of the application, and rectifying issues. The US Patent and Trademark Office also recommends hiring an attorney.
How to register a trademark name
1. Choose a trademark for your business
Choosing a unique brand name, phrase, or design that represents your business is the first step in obtaining a trademark. There are two advantages to selecting a distinctive business name or logo:
- People will easily be able to associate it with your products/services
- It’s easier to defend your trademark if someone uses it illegally
The USPTO recommends businesses choose a trademark from the following categories.
- Fanciful trademarks: New words that aren’t in the dictionary. For example, Rolex®.
- Arbitrary trademarks: A word that has no relation to the type of goods you sell. For example, Dove® personal care products.
- Suggestive trademarks: Words that hint at the products or services you offer. For example, Netflix® for online streaming.
It’s better to avoid choosing generic terms to register a trademark. For example, you can’t trademark the word “cafe” for your coffee business.
Also, avoid common descriptors of a product or service. For example, you won’t be able to trademark the word “crunchy” for a potato chip.
Note: A descriptive trademark may get approval if it has acquired uniqueness through the company using it for years.
2. Search if the trademark is already used
Before filing a trademark application, you must ensure the name or design you want to trademark isn’t the same or similar to existing trademarks or applications in process.
The USPTO considers the “likelihood of confusion” as a reason for rejecting similar trademarks.
So, before you proceed with the application, it’s recommended that you conduct a “clearance search” to ensure your name or design is unique. It saves you time and money by preventing you from going through the federal trademark registration process.
You may search the registered trademarks and existing applications in the Trademark Electronic Search System (TESS). Here are a few things to look out for:
- Same names, phrases, and designs
- Names that sound similar when spoken
- Names that translate to the same meaning
- Plural forms and words with an apostrophe
The USPTO encourages applicants also to use other sources, like state databases and Assignments on the Web (AOTW). You may also hire a firm specializing in trademark search services.
If you plan to register a special form of trademark, you need to search the TESS using a design search code. It’s a six-digit code assigned to specific design elements. Refer to the design search code manual to find the correct codes.
You’ll want to head back to the drawing board if your name or design is too similar to an existing trademark. Alternatively, you might be able to buy the existing trademark if you’re set on using a particular name, design, etc.
3. Prepare a trademark application
After the clearance search, you can start preparing your trademark application. You should also determine in which class of goods and services you want to register a trademark.
Keep the following items ready for the application filing:
- Business owner’s name and address
- Drawing of the trademark if it’s a special form (JPEG format)
- Sound file if it’s a sound mark (WAV format)
- Description of the trademark
You may register a name or design you’ve used for a long time. In such a case, you should show the filing basis for the trademark as “use in commerce.” However, show the basis as “intent to use” if you’re starting a new business and plan to use the name or design for the first time.
If you’re filing under the use-in-commerce basis, you need to supply a specimen as evidence of the current usage. For example, you must submit photographs of how your name or design is used on product hangtags, packaging, brochures, or your website.
4. File the trademark application
You can start filing the trademark application by creating an account with the USPTO website. You also need to verify your identity either offline or online.
Next, you should fill out the online application form on the Trademark Electronic Application System (TEAS). You have two options to file your application:
- TEAS Plus: Use this option if you have all the materials and information ready to start filing. Your goods or services category should be in the Trademark ID Manual. The filing fee for TEAS Plus is $250 per goods or services class.
- TEAS Standard: Use the standard filing option if you don’t have all the information required for TEAS Plus or want to file for a category of goods or services that is not in the Trademark ID Manual. The filing fee is $350 per class.
5. Follow up on your application
After you submit the trademark application, the USPTO will assign an attorney to examine your application. If the examining attorney finds no conflicting trademarks or other issues, they’ll approve the application.
If the examining attorney finds an issue, they’ll send you a notification, known as an office action. You might need to respond to the office action through a call, email, or the TEAS as directed by the attorney.
The USPTO might reject the application if you don’t respond within the deadline. You may appeal this verdict through the Trademark Trial and Appeal Board (TTAB).
According to the USPTO, a new trademark application can take around 14.5 months to complete. You may use your trademark application serial number to track the progress.
6. Maintain your approved trademark
It’s not enough to obtain a trademark registration. You must file a declaration of use five to six years after the approval for continued trademark protection. You must also file a renewal application nine to 10 years after the trademark approval and every 10 years after that.
Limitations of trademarks
Getting a trademark doesn’t guarantee your intellectual property is safe from misuse. The USPTO only issues trademarks. It’s up to you as the trademark holder to keep an eye out for infringements and initiate legal action when you find them. It’s also crucial to retain your trademark.
Emily Poler, a partner at law firm Poler Legal, says trademark owners need to protect their trademarks from unauthorized use “by sending cease-and-desist letters to infringers and opposing the registration of potential similar marks.”
Trademarks aren’t issued for a lifetime. You must also provide evidence of trademark usage by filing the appropriate forms to retain your trademark.
Now that you know how to trademark a name or design in the US, you can collect the required information and start your clearance search. The application process could take over a year, so it’s best to begin this process well in advance.
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