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 $225 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 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.
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 $300.
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.
- 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 $275 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 $575, 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
How to Trademark Something
In the sections below we address the different types of trademarks and unique issues associated with each. You can also see our how to trademark something page.
How to Trademark a Name
Many businesses or brands are named after the owner, such as the Ed Hardy line of clothes. Actors and celebrities also commonly register their names as service marks, in order to protect their brands. Only the named person, or someone acting on his or her behalf, may receive protection for personal names.
However, the trademark office only permits registration of names that function as a trademark. This requires that the applicant show there is a link between the name and the brand in the minds of consumers. The less common the name, the more likely the Trademark Office is to register it as a trademark. By contrast common surnames such as Smith and Jones are generally more difficult to register.
How to Trademark a Logo
We typically advise that filing a word only trademark is the paramount and thus should be filed as the first application. If a design element is important to the business and is unlikely to change, then a second application should be filed for the design. Prior to filing for a logo, you can work with the Design Search Code Menu to determine which codes apply to your design. The examining attorney assign codes upon review of your application.
When you submit your logo, you will need to decide if you want it in black and white, or if you want to claim color as a feature of the trademark. If you register a black and white trademark, your protection will be independent of color. If you specify that colors are an element of your logo, your protection will be more specific to those colors.
How to Trademark a Phrase
A phrase can be registered as a trademark when words are combined in such a way that they represent a particular brand in the minds of the consuming public. So the phrase must be seen as a source identifier.
When conducting your trademark search, make sure that you search for the entire phrase, as well as variations using common abbreviations, acronyms, as well as inventive spelling to increase your chances of registration. For more information, please see our how to trademark a phrase page.
How to Trademark a Business Name
To register a business name, you will first need to do a business name search to make sure that the business name is not already in use. Filing a trademark application for a business name is only appropriate if you are using the business name as a trademark. In other words, you must be using the trademark in a consumer facing way such as on products or on a website offering services.
When you register your business name with the Trademark Office, you need to decide if you want to include “Inc.” or “LLC” at the end of the company name. Many, but not all, companies choose to omit these likely because these letters may detract from the primary trademark which is the business name. For more information see our how to trademark a business name page.
How to Trademark a Company Name
See How to Trademark a Business name above.
How to Trademark a Slogan
Slogans are generally registered as word trademarks. Companies may decide to use certain amounts of slang or improper English in their slogans, in order to increase the likelihood of showing that their slogan is unique.
McDonald’s slogan, “I’m lovin’ it” is an example of a well-known slogan that uses this technique, putting together common words in an uncommon way, allowing their slogan to act as a more unique source identifier. For more information, see our how to trademark a slogan page.
How to Trademark a Band Name
A band name can be registered just like any other trademark. Doing a trademark search for bands names is particularly important because bands tend to choose similar types of trademarks.
For example, Blink 182 was originally just called blink but was forced to change its name after another band threatened a trademark lawsuit. Dinosaur Jr, originally just Dinosaur, had a similar problem with The Dinosaurs.
In the US, you can protect certain elements of your clothing brand through trademark law. Company names, logos, images, and design elements can be protected if they act as a source identifier. You will need to file a word trademark application for names or slogans, and a design trademark application for logos or images.
Types of clothing will fall into trademark class 25, while retail stores selling clothing fall into trademark class 35. For class 25, the specimen of use with your trademark application must show use of the trademark on a hang tag or label. Generally, the trademark being used on the front of a shirt is considered decorative and thus not sufficient for trademark use.
How to Trademark a Phrase for a Shirt
T-shirts containing witty phrases are extremely popular and easy to copy. However, as stated above simply putting a phrase on the front of a shirt is not likely to be accepted by the trademark as a specimen of use. Instead, the phrase should be shown on a hang tag or label attached to the shirt.
How to Trademark a Brand
When you trademark a brand, you will need to decide what elements act as a source indicator to your customer base. This might include:
- Your company name,
- Names of specific products or services you provide,
- Your logo,
- Slogans or other phrases associated with your brand, and
- Any other elements you use that you want to protect, or keep others from copying.
Once you have distilled your brand into discernable parts, you will need to file trademarks for each piece. The brand name or the names of specific products or services may be registered as plain word trademarks, while your logos would be registered as a design trademark. As your offerings grow, you can register additional trademarks that represent each additional brand.
How to Trademark a Quote
Similar to a slogan, you can also trademark a quote provided that it is used and recognized as a source indicator for a particular brand. A catchphrase can be monetized by placing it on goods or using it in relation to services.
Once a quote is registered with the Trademark Office, the owner needs to be diligent about enforcing the trademark. Failure to police your trademark against infringers could result in a loss of trademark rights.
How to Trademark a Product
Although you cannot trademark a particular product, you can protect the trademark associated with it. For example, you can trademark the product’s name, as well as any art, logo, or images on the exterior of the product, and even the packaging. By trademarking the appearance of your product, you are protecting its trade dress.
How to Trademark a Saying
Similar to slogans, sayings are commonly registered as word trademarks. The primary issue with registering a saying is that it must be seen by a consumer as designating the source of goods. For example, a saying printed on the front of a mug may not been seen by a consumer as a source identifier and thus it may be difficult to register.
How to Trademark a Domain Name
In order to register a domain name, the domain name must be used apart from simply being used as a URL. So the domain name should be shown at the top of a website or on goods to qualify as trademark use. Components of the domain name that are generic like .com must be disclaimed since no single company can own that identifier. Adding “.com” or “.org” to an otherwise generic word will not let an otherwise generic word or phrase become a trademark.
How to Trademark an Image
While it is possible to register an image, consumers are unlikely to see a photograph as a source identifier. If the image is more of a logo and will be seen as designating the source of goods, then it can be protected like any other design or log.
How to Trademark a Book Title
A single book title in itself will not be accepted by the trademark office as trademark usage. However, a series of books, such as “For Dummies” or “Harry Potter” can be registered as a trademark.
When trademarking a book series, consider protecting not only the name as a word mark, but also the look and feel of the book. Often, books are advertised using specific fonts, colors, or even logos, If your book branches into other types of products, such as bookmarks, t-shirts, or even lectures, you should register the trademark in multiple classes of goods or services for the most protection. Class 41 is a similar class covering educational and entertainment services.
How to Trademark an Artist Name
It is common for artists or musicians such as Lady Gaga or 50 Cent to trademark the names associated with their entertainment brand. Before you try to register an artist name, it is important to conduct a trademark search in the entertainment related classes to be sure a similar name has not already been used. You should also be sure that you or your company own the name. In other words, you should be sure that you have not signed away rights to the name with a record label, sponsors, or your representation.
How to trademark a Stage Name
A stage name can be registered as a trademark just like an artist name. Many actors change their names to avoid confusion with other actors, to simplify their names or make them more marketable, or as a privacy measure.
How to Trademark a Character
When you trademark a character, you should consider submitting separate applications for the character’s name as well as its image. The character design should also be filed as a copyright application. A character may be subject to several different trademarks protecting different iterations of the character such as character’s distinctive face, head or body shape. Even a unique voice or sounds associated with the character may be subject to trademark protection.
How to Trademark a Word
A single word is capable of trademark protection like any other trademark. When you trademark a word, you should consider the strength of the trademark relative to the class of goods or services you want it to advertise. Stronger trademarks have a higher likelihood of being registered, while weak trademarks are more likely to be denied in which case your registration fee is not returned.
Remember that made up or fanciful words, such as Pepsi or Exxon, are the strongest type of word trademark because they only exist to designate the source of goods.
How to Trademark a Term
A term such as two or more words can be trademarked just like a singular word. See above.
If you would like assistance with filing a trademark application, please feel free to contact us.
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