The trademark registration process is not necessarily a difficult one. It can, however, prove exhausting. From the time you file an application it takes about 10 months to receive approval–if everything goes smoothly. If you make a single mistake on your application, the registration process could take longer than a year.
Since the United States Patent and Trademark Office (USPTO) does not offer refunds for failed applications, a mistake can be especially costly. To ensure that your application is completed in the shortest possible timeframe, you should ensure that you have everything ready to go in advance of filing. A little preparedness can go a long way in expediting the registration process – use this list as your trademark registration checklist and make sure you’re ready.
Before you file your application
1. Run a Basic Trademark Search
If you apply for a trademark that is identical, or confusingly similar to, an already existing trademark, the USPTO will very likely reject your application. To avoid this pitfall you must conduct trademark searches before deciding on your intended mark.
The USPTO offers an effective and publicly available search tool. Visit the USPTO’s official website and conduct a search to see if there are any names similar to yours. Before you file, though, you might want to consult a trademark attorney. They know the ins and outs of searches and can advise you on the many iterations of your mark that make it similar to an existing one.
2. Identify What Your Company Offers
Does your company offer a service or a product? Products require a trademark registration, while services require a service mark registration. Review the mark to ensure that it aligns with what you’re offering. The USPTO can refuse your application if they find your description to be too vague or indefinite.
3. Decide the Scope of Your Business
Will your business be working across state lines? If the answer is yes, you will need a federal trademark registration that protects your brand across all states. Otherwise, you could opt to limit your trademark registration to a single state.
Even if you plan to work within state lines now, registering a federal trademark can prove beneficial. The case of the Burger King in Mattoon, Illinois, illustrates this point.
The application process also includes options for businesses that wish to register international marks.
4. Check Your Domain Name
The USPTO does not control domain name registrations online. For obvious reasons, most companies prefer to use their trademarked name on their websites. To register a domain name, you’ll need to apply at an Internet Corporation for Assigned Names and Numbers (ICANN)-accredited registrar. If you already have a domain name, you can register it as a mark as long as it fits with the USPTO requirements.
If someone already owns the domain name associated with your mark, you’ll want to verify whether they’ve already registered it. If they haven’t, you can search the WHOIS database to find contact information and offer to purchase the domain.
Matters can get tricky at this point. If the domain is not in active use, you do have certain rights. You probably can’t sue the domain owner under the Anticybersquatting Consumer Protection Act, since the domain was registered before your trademark. But the ICANN arbitration procedure can assist you, if the owner isn’t willing to sell.
5. Clarify Your Basis
When you are stating the basis for your trademark application, you can file it under one of two options. You can either apply on the basis of “use in commerce”, or “intent to use”. The decision will depend on the status of your mark.
If you are not using your mark in commerce yet, then your application should be filed for “intent to use”. Marks currently used on commercial goods are filed under “use in commerce”.
To register a trademark that is already used in commerce, you will need to provide proof of use, such as pictures showing use of the mark on your product labels, or advertisements showing use of the mark in connection with your service offerings.
6. Prepare Your Application Fee
The USPTO charges a fee for trademark applications. Depending on the method you use and the class of registration you are seeking, trademark applications can cost anywhere from $250 to $400 per class of goods or services per mark.
7. Consult with an Attorney
Your intended mark may face issues for various legal reasons. For example, the USPTO often turns down applications wherein the mark is considered generic. If you have never previously filed a trademark application, then spotting these loopholes might be difficult.
An attorney can spot these issues before you file the application. Since the USPTO does not issue refunds for rejected applications, an attorney consultation can save you time and money on applications and fees.
Application form checklist
Once you have reviewed the steps above, you will be set to fill out the application form. Filling out the trademark application form is easy–as long as you know what you are doing. The following is a checklist of some of the essential information that must be included within your trademark application form.
- Identify and/or describe the mark. Make sure the mark is clear and related to your company’s products or services.
- If your mark consists of a logo, include a high-resolution image of your logo.
- Indicate the name, address, and citizenship of the applicant.
- Specify the nature of applicant that is registering the mark. Is it an individual, a partnership, a limited liability company, or a corporation?
- Indicate whether you have already begun to use the mark in commerce. If you have, you will be required to provide the date of its first use, and proof of such use.
After you have submitted your application, your portion of the registration process will be complete for the time being. The USPTO takes the next step of reviewing and, hopefully, approving the trademark.
As part of its review process, the USPTO will publish your mark to see if there are any businesses or companies that oppose its registration. If there are any concerns or issues with your mark, the USPTO will alert you. If none emerge, the USPTO will approve your mark.
While you await the outcome of your application, you can identify your trademark by placing the ™ or ℠ symbol next to it.
It is illegal to use the ® symbol if your mark is not registered. If the USPTO notices this, you may receive an advisory notice informing you of when you can and cannot use the ® symbol. Once your application is approved and registered, you will be allowed to add the registered ® symbol to your mark.
Don’t compromise the integrity of your business by making a mistake with your trademark registration. Keep a close eye on the details and consult with an experienced attorney throughout the process.