How to Trademark
This page is our comprehensive guide on how to get a trademark.
A trademark is a word, phrase, symbol, or design, or some combination of these that identifies and distinguishes the source of goods or services of one party from those of others. Trademarks act as a source indicator and allow brands to prevent competitors from capitalizing on their goodwill and customer base. This compares to a copyright which protects original works of authorship, and a patent which protects novel inventions.
A trademark can be protected without registration under common law. However, a federal registration is required for full protection. Though this can be done on your own, we recommend that you utilize a trademark attorney.
How to File a Trademark
Regardless of what you want to trademark, the mechanics of trademark registration are the same.
First, when you select your trademark, you will need to consider your type of trademark and if it will consist solely of words or a design, or both. Generally words are the most important element of your trademark and they should be filed for alone as the primary application. The strength of your trademark should also be considered since the stronger your trademark the less likely it is that you will run into infringement issues.
Second, you will need to identify the class of goods or services into which your trademark falls. Often, your goods or services will fall into multiple classes. To receive the most protection possible for your trademark, you should file it in all the classes in which you use or will use the trademark.
Third, you should perform a trademark search to be sure that your trademark, or a confusingly similar one, is not already in use.
Fourth, you need to gather all information needed to file the application such as owner name and address, payment information, and filing basis. If your trademark has been used in commerce previously then your filing basis will be actual use. If you want to reserve your trademark for future use, your filing basis will be intent to use. For trademarks that are already in use, you will need a specimen of use and dates of first use to file your trademark application.
Fifth, you need to file the application. This should be done online. Online applications cost less and are processed more quickly than applications filed by mail. The government filing fee when filed online is usually $250 per class. At the time of filing you should consider filing an international trademark application because most countries provide a priority filing date if you file within 6 months of your U.S. filing date.
After filing, you will receive correspondence from the US Trademark Office regarding your application. The communications range from minor status updates to the issuance of an Office Action which could initially or finally deny your trademark application. If your application is denied, you will generally have 6 months to correct any deficiencies if applicable. If you receive an Office Action it should be taken very seriously because if it is not handled correctly you will receive a final refusal.
If your trademark application is approved, it will be published for opposition and, if there is no opposition within 30 days of publication, your trademark will register as an official trademark.
Thereafter, you will need to renew your trademark between the 5th and 6th years, and each 10th year after registration. This filing is to show the Trademark Office that you are continuing to use the trademark in commerce. If you are not, your trademark will abandon. You should also monitor your trademark for infringement and if you notice a confusingly trademark in use you should promptly send a cease and desist letter.
Trademark Search
Trademark searches are both an art and a science. They require methodical searching that includes looking for “obvious” competitors, as well as competitors whose trademarks and logos are not obvious on their face, but are still similar enough to be confusingly similar. This is where a trademark attorney will save you time and money potentially avoiding trademark infringement and trademark litigation issues down the road. Most of our clients believe that achieving registration means that your trademark cannot be challenged, but that is not the case. You can be exposed to a trademark infringement claim even if you own a federally registered trademark. Being forced to change your trademark will obviously lead to a large loss of time and money, with the worst case scenario being forced to change your trademark AND being sued. Thus, a professionally conducted trademark search is paramount.
The first place to look is the USPTO’s trademark electronic search system (TESS) searching for the exact words you wish to use in your trademark, as well as common abbreviations and alternative spellings. For example, if you want to use the word “bicycle” in your proposed trademark, you should do searches for “bicycle,” “bike,” and “bykes.” You should also search words with similar connotations such as jelly beans and lollipops which were held confusingly similar for skating rinks.
If your trademark includes an image or logo, you should conduct a search using design search codes. The full list of these codes is available in the Design Search Manual. You will need to find the code for each design element your logo or trademark incorporates in this manual to ensure that confusingly similar trademarks are not registered.
In addition to utilizing the Trademark Office’s database, you should also search google, business names, and domain names. If your .com is available, that is a good sign.
Doing a trademark search may feel tedious, but it is definitely the most important step in getting a trademark. If you find a similar existing trademark filed or in use, the sooner you change to a more unique trademark the better.
Our flat professional fee for a trademark search is $400.
Trademark Classes
When you register a trademark, you will need to select one or more classes of goods or services in which to file your application. There are 34 different classes for goods, and 11 classes for services, with each class including multiple different types of related goods and services. You can also search your goods or services with suggested descriptions using the Trademark ID Manual.
Trademark Cost
Currently, it costs a minimum of $250 per class of goods or services to file a trademark application. To qualify for the lowest rate, using the TEAS Plus form, you will need to:
- Communicate with the USPTO via email,
- File through the online application system,
- Provide a complete application, with no additional submissions, and
- Accurately list the classes appropriate to your goods and services.
The TEAS Plus form can be used for intent to use trademark applications but you will need to pay an additional $100 government fee when you provide the appropriate specimen of use to the Trademark Office. A trademark cannot register until actual use is proven.
You can also file trademarks using the TEAS RF form, which costs $350 per class of goods or services. This may be an option if you don’t want to use the descriptions of goods and services that the trademark office has already approved. There is also the TEAS Regular form, which costs $400 per class of goods or services and would be the only option if you do not wish to communicate via email. The Trademark Office’s fee schedule is subject to change. Current fees are available here.
Our professional fee to prepare and file a trademark application is $950, which includes our time for basic follow up through registration.
How to Trademark a Name for Free
Unfortunately, the US Trademark Office will not register trademarks for free. It is possible to reduce trademark application costs by utilizing the TEAS Plus online form and agreeing to communicate with the Trademark Office through email.
Types of Trademarks
The type of trademark and its strength is an important consideration when seeking trademark protection.
Strength of Trademark
Trademarks can be classified into five categories that describe the relative strength of a trademark. These include Fanciful, Arbitrary, and Suggestive trademarks on the stronger side, and descriptive and generic trademarks on the weaker side.
Fanciful trademarks are the strongest type of trademark. This term is used for words, phrases, or logos created specifically to function as a trademark. Fanciful trademarks include “Pepsi,” “Clorox,” and “Exxon.”
Arbitrary trademarks are words that are in our day-to-day language, but are “used in an unexpected or uncommon way.” Using the common word Apple to sell iPhones and computers is probably the most famous example of an arbitrary trademark.
Suggestive trademarks refer to the good or service in question, but the connection between the trademark and the product requires some imagination or mental pause. For example, “Q-tips,” which is short for quality tips, is a suggestive trademark.
These three types of trademarks are inherently distinctive and therefore strong enough to receive protection on the Principal Register of trademarks. Not every trademark is able to meet this threshold.
Merely descriptive trademarks describe one or more elements of the goods or services with which they are associated. “International Business Machines,” commonly known as “IBM” is considered to be merely descriptive. This type of trademark is only permitted on the Principal Register when it has gained acquired distinctiveness or secondary meaning through extensive use in commerce, which IBM’s trademarks have achieved.
Merely descriptive trademarks that have not met this threshold may be registered on the Supplemental Register. This affords some rights, but not as many as are available on the Principal Register.
Finally, the Trademark Office cannot register generic terms, which are used to describe the goods or services being sold. So “Apple” is a good trademark for a computer company, but not for a farmer that sells apples.
When you submit your trademark application, you will not need to specify how strong your trademark is. However, these different categories are important to understand if the examining trademark attorney issues an office action based on a likelihood of confusion with a prior trademark.
Although it is impossible to guarantee whether a trademark will be approved for registration, conducting a self-assessment of the relative strength of your trademark along with conducting a trademark search will give you an idea of your chances of success when submitting a trademark application.
Use in Commerce or Intent to Use
Finally, while an intent to use trademark application can be filed, the Trademark Office will only register trademarks that are currently being used in commerce.
If the trademark is currently being used, the Trademark Office will require a specimen of use with the application, showing the trademark’s use. If a company intends to use the trademark in the future, a specimen is not required with the original application. In this way, a company can reserve a trademark for a brand it is currently developing. Once the trademark is used in commerce, a statement of use with a specimen of use will be required. Reservation cannot be indefinite – the trademark application will abandon if the trademark is not used in commerce within 30 months of a notice of allowance which is when the trademark is approved.
Applicants filing intent to use trademarks incur additional fees they must pay when submitting a specimen or extension request. The government filing fee for a statement of use is $100, while the government filing fee for a request for extension is $125.
How to Register a Trademark
Trademark Application Form
All trademark application forms are available online from the US Trademark Office. It is a good idea to preview the form and collect all the required information before filing it online.
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If you would like assistance with filing a trademark application, please feel free to contact us.
