How to Register a Trademark

If you want to protect your company’s brand and identity, trademark registration is essential.

Many business owners (especially small businesses) put off filing an application because they think the trademark registration process is too complex, or even unnecessary. It might be an involved process, but it can be broken down into four easy steps and is the only way to have legally protected exclusive rights to the mark outside your immediate geographic area.

This process is vital for securing legal protection and legal rights for your Intellectual Property. Follow along and learn how to get a registered mark with the United States Patent and Trademark Office (USPTO) with minimal frustration.

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    Step #1 – Perform A Comprehensive Search

    Do you like wasting money? If so, then you can skip Step #1. For everyone else, performing a comprehensive trademark search is the most important step in the process. How can you expect the USPTO to approve your trademark application if you haven’t checked to make sure that it isn’t too similar to another registered trademark?

    There is a standard to which all new trademarks are held:

    Likelihood of Confusion

    If the mark on an application might cause consumers to confuse the applied-for mark with an existing trademark, the United States Patent and Trademark Office will reject the application. So not only do you have to look for exact matches of your mark, but you also have to look out for marks that could be considered “confusingly similar”. This search is crucial to avoid a trademark infringement lawsuit later.

    That’s why a trademark attorney can provide invaluable assistance. While anyone can search Google and the Trademark Electronic Search System (TESS) for free, an attorney provides two distinct advantages:

    • An attorney has the experience to properly use the TESS database. Remember, your search isn’t complete if there are no exact matches. An attorney can seek marks that could be considered “confusingly similar”.
    • An attorney has access to databases containing common law trademarks and state trademark registrations. Not all valid trademarks are registered with the USPTO. Searching common law trademark databases and state trademark databases further ensures the validity of your potential trademark application.

    Read more: Do you even need a trademark attorney?

    Step #2 – File a Trademark Application

    If you did your due diligence with Step #1, you’re ready to file your trademark application.

    This step is critical to officially register your type of trademark and use the trademark symbol. In one way, it’s as easy as filling out an online form. In another way, there are some complexities.

    You of course have to fill out the application with careful attention to requirements and detail. But you’ll have an important choice to make before you type one letter on the application.

    TEAS or TEAS Plus?

    When you go to the trademark application webpage, you’ll see this choice. The simple method is to file the Trademark Electronic Application System (TEAS) form. The filing fee costs $50 more, but it requires far less of the applicant. If you prefer to save $50, TEAS Plus is a great option.

    What’s required of you on a TEAS Plus application:

    • You must fill out every field — they’re all mandatory
    • You must select a class of goods or services from the Acceptable Identification of Goods and Services Manual. On a basic TEAS form, you have an opportunity for free-text entries, but on the TEAS Plus form, you have to stick with the classes and descriptions that the USPTO provides.
    • You agree to file all future communications through the TEAS system
    • You agree to receive all future communications from the USPTO via e-mail
    • You pay all trademark registration fees at the time of application

    IMPORTANT NOTE: The USPTO will charge you the extra $50 per class of goods and services if at any point you violate these terms.

    It’s worth noting that the contents of the trademark application form can have important legal implications that you may not understand on your own. For this reason, it’s best to have an attorney on hand to guide you through the process.

    Step #3 – Monitor Your Application

    The third step is the easiest of them all, but it’s also the most frustrating.

    You’ll probably spend a lot of time refreshing web pages, hoping that there’s some review or update on your trademark application. Chances are that after you file your application you’ll have some waiting to do. The general timeline before you hear anything:

    4 to 6 Months

    The good news: You will eventually hear back from the USPTO. The better news: if the examining attorney reviewing your application finds no fault with your application, you’ll move on to Step #4 and be one step closer to federal trademark registration.

    The bad news: You could face some rough times at this point. The USPTO might issue an Office Action. Or worse, you might get the dreaded denial.

    Relax. Chances are the USPTO won’t outright refuse your application. Typically they’ll give you six months to amend your application and resubmit, correcting the issues the examining attorney raises.

    One big reason the USPTO issues Office Actions: the mark is merely descriptive. Apple ran into this problem when they filed a trademark application for IPAD MINI.

    They filed the application in November 2012, not long after the product launched. However, the USPTO issued an Office Action, stating that the mark was merely descriptive. Apple already owned trademark rights to “IPAD” and MINI acts merely as a description of the existing mark. Later the USPTO changed its initial refusal and allowed Apple to continue with its registration, provided that it disclaims any rights to the use of the word MINI apart from the mark as shown.

    Read more in: Can you trademark a generic word or phrase?

    Step #4 – Finalize Your Registration

    Approval of your trademark application is a big milestone, but it is not the end of the process.

    Although the USPTO has many resources at its disposal, it cannot examine the likelihood of confusion in the same way as trademark owners can. This publication phase is important to ensure that your mark does not potentially cause confusion among consumers, especially when considering trademark law and the specifics of registering a trademark in commerce.

    Any company that believes your registration may infringe on their own trademark rights has 30 days to state its opposition. If a company does file an opposition, your case will move to the Trademark Trial and Appeal Board (TTAB).

    If a company does oppose your trademark registration, it is not the end of the world. In many cases, companies will file oppositions to any mark that bears even the slightest resemblance to one of their marks. They want to fully protect their trademark rights and avoid dilution of their mark. There is a chance that your mark will pass through eventually (though possibly after you spend money on legal defense).

    A prominent example involves video game developer Ltd., makers of the massively popular game Candy Crush Saga. When Stoic Studio filed a trademark application for their game, The Banner Saga, filed an opposition. They had a pending application for CANDY CRUSH SAGA and didn’t want Stoic’s use of the word SAGA to dilute their own mark. The public at large might have seen this as ludicrous — the games are nothing alike and surely can’t own the word “saga” — but was merely trying to prevent dilution of its own mark. A year before that, the developer Alfred Ransom of Runsome Apps, filed an opposition to’s trademark application for CANDY CRUSH SAGA. Since 2010, Ransom has owned trademark rights to the name of his game, “CANDYSWIPE”.

    In early 2014 all cases were settled. and Stoic Studios will continue with their respective trademark applications, while Ransom will continue to own trademark rights to “CANDYSWIPE”.

    If no company opposes your mark, congratulations! The USPTO will send you a certificate of registration by mail. Typically this will take about three months. You will also receive instructions about how to preserve your trademark, so that you don’t lose rights over time.

    Read more: How can an attorney help with these items? Check out our guide on the trademark attorney process.

    Trademark Registration FAQs

    In many cases, you might not have any claim at all to a top-level domain if you do not already own it. Your rights will vary depending on the specifics of the case, but unless someone registered the domain after you received your trademark registration, you might be out of luck.

    Read more: Trademarks and domain names - what you need to know

    As is often the case in legal matters, the answer here is "maybe."

    For instance, the name "MY GIRL" is a registered trademark owned by Enertec Enterprises for a line of dolls and accessories. However, there is a second trademark registration for the same name "MY GIRL" that is owned by Acushnet Company for a line of golf putters.

    Read more:  Can I trademark a name that's already in use by someone else?

    A trademark is a word, phrase, symbol, or logo that is used to brand, identify, and distinguish a product. A service mark (or servicemark) is a word, phrase, symbol, or logo that is used to brand, identify, and distinguish a service.

    Read more: Trademarks vs Service marks

    Wrapping Up

    The Trademark Application Process can be a tricky one to navigate and it's important that you do it right, not only to gain proper trademark protection but any incorrect information can lead to delays of an already lengthy process.

    Registering a trademark with USPTO involves a lot of decision-making making which can lead to many questions from yourself. Having a trademark attorney guide you through the process can make the application much smoother and less stressful on you.

    Xavier Morales, Esq.

    About the Author:

    Xavier Morales, Esq.

    Mr. Morales founded this trademark law practice in January 2007 with the goal of providing intellectual property expertise to entrepreneurs and businesses around the country. Since then, he has filed more than 6,000 trademarks with the USPTO. You can learn more about Xavier here.

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