Trademark 101: Where To Start
For many business owners, the idea of registering a trademark can be a bit intimidating. In the article below, we’ll provide some basic information about trademarks, explain the benefits of registering a trademark, outline what the first steps are that you need to take in order to get started, and provide a few resources that you can use for additional help throughout the registration process.
What Is a Trademark?
So what is a trademark? According to the United States Patent and Trademark Office (USPTO), “a trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.”
Trademarking is available for words, names, symbols, or devices that are capable of distinguishing the owner’s goods or services from the goods or services of others. A trademark that merely describes a class of goods rather than distinguishing the trademark owner’s goods from goods provided by others is not protectable. For example, the phrase “corn flakes” by itself is not protectable as a trademark for cereal because that term describes a type of cereal that is sold by a number of cereal manufacturers rather than distinguishing one cereal manufacturer’s goods.
Why Should You Register a Trademark?
There are many advantages to owning a registered trademark. On their website, the USPTO lists the following as benefits of federal trademark registration:
- Public notice of your claim of ownership of the mark
- A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration
- The ability to bring an action concerning the mark in federal court
- The use of the U.S. registration as a basis to obtain registration in foreign countries
- The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods
- The right to use the federal registration symbol ®
- Listing in the United States Patent and Trademark Office’s online databases.
Owning a registered trademark also gives you the right to monitor for and act upon cases of infringement.
What Are The First Steps?
The trademark registration process is complex, but in general, these are the steps that anyone filing a trademark application will typically need to follow:
Step 1: Determine whether you need trademark protection. As mentioned above, there are many advantages of registering your trademark. Ultimately, however, it is up to you to decide whether or not you need trademark protection. If you have spent time doing your own research learning about trademarks and are having a hard time deciding whether or not registering is worth it for you and your business, consider consulting with a trademark attorney.
Step 2: Decide whether you should hire a trademark attorney. You are not required to hire a private attorney in order to submit your trademark registration application. It is possible to complete the entire process by yourself. You need to decide if you have the time, energy, and knowledge necessary in order to successfully complete the registration process. If you’re not sure, it might be a good idea to talk with an attorney about how they can help you through the process.
Step 3: Identify your mark format. The USPTO requires you to identify your mark format within your application. Three possible mark formats are available: (1) standard character format; (2) stylized/design format; or (3) sound mark.
Step 4: Identify the precise goods or services to which the mark will apply. This information will need to be included in your application. As such, it’s important to be as clear as possible about your goods or services in order to increase the likelihood that your application will be approved.
Step 5: Perform a trademark search. Before completing and submitting your application, it’s important to find out if anyone else is already claiming trademark rights to the mark you’d like to register. Again, it may be helpful to consult with a legal expert during this step. A trademark attorney can help perform a comprehensive search on your behalf, and will be able to tell you whether or not you should move forward with your application.
Step 6: Determine your basis for filing. There are two common categories: (1) use in commerce; and (2) intent to use. A section on the USPTO explains these two categories in further detail. A statement on their website reads, “If you have already used your mark in commerce, you may file under the “use in commerce” basis. If you have not yet used your mark, but intend to use it in the future, you must file under the “intent to use” basis. This means you have a bona fide intent to use the mark in commerce; that is, you have more than just an idea but are less than market ready (for example, having a business plan, creating sample products, or performing other initial business activities).”
Step 7: File your application. Filing your application is the final initial step in the registration process. Once you file your application, you will have to be patient while an examining attorney with the USPTO reviews your application. According to the USPTO, “the total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing and the legal issues that may arise in the examination of the application.” In some cases, you may need to provide additional information in order to get your application approved. In such cases, it can be helpful to hire an attorney who can help monitor your application status and prepare any additional documentation needed.
Where Can You Go For Help?
1. Hire a legal expert to help you through the process. The Law Office of Xavier Morales can prepare and file a trademark application for your business name, brand name, logo or slogan. Registering a trademark with the United States Patent and Trademark Office (USPTO) gives the owner of the trademark registration exclusive nationwide rights to use the name, brand, or logo.
2. Use the resources offered on the USPTO website. The United States Patent and Trademark Office website is full of helpful resources, guides, FAQs, timelines, recommendations, and more. If you’re not quite ready to hire a trademark attorney to help you begin the application process, the USPTO website is a good place to go for more information.
3. Do more research on your own. If you truly are interested in learning more about what it takes to register a trademark, start doing research on your own. Visit the local library and check out books that offer information on the subject, ask friends or colleagues who have gone through the process, and scan the web for additional helpful resources.
Have you gone through the trademark registration process? What was your experience like? What advice would you give to someone else who wants to register a trademark? Leave a comment below.