Have you reached the point in your business plan at which you need to trademark? Congratulations on making it this far! Trademarks are how people distinguish and recognize your brand from the others. A trademark is any word, slogan, symbol, or design that identifies the source of your services and distinguishes them from those of another party. More importantly, it is a legal agreement that protects you from infringement. Think of it as the wax seal you stamp on your goods so that you can have the sole rights to sell them.
There are a couple of ways you can go about registering a trademark. The consensus, however, is that you should hire a licensed attorney. You can submit an application to the USPTO by yourself, or you can do it with the help of a legal service (which is different than a lawyer). To register your trademark, you need it to be a seamless process. The best thing to do would be to find a lawyer. They have the skill and expertise needed to get you through the technicalities and difficult language of the application. Lawyers can be expensive, but don’t worry if you cannot afford one: here are some resources for you!
Before you get started, know that there are two different types of registries in which you can establish a trademark. You can register your mark on the principal or supplemental register.
A trademark on the principal register enhances your rights.This one is the hardest to achieve, but offers the most protection:
- It establishes legal rights known as common law rights
- It gives you the legal rights to use your trademark nationwide and in all U.S. territories
- It assumes that you are the legal owner of your mark
- It allows your mark to be searched on the USPTO’s Database of Registered Trademarks
- It gives you the right to pursue legal action concerning your trademark in federal court
You also get to use that fancy ® symbol!
The supplemental register was established to allow trademarks to be registered that don’t qualify for the principal registry. The only requirement on the supplemental registry is that your mark is capable of distinguishing goods or services. There are some drawbacks, though. It does not offer the legal protection of the principal register and cannot achieve incontestability. This means that if a third party comes along and contests that they have a mark that is similar to yours, then they can have your mark cancelled on the registry. A supplemental registry is easier to obtain, but doesn’t offer as much protection.
The benefits are:
- Your trademark will appear in searches
- You will be able to use the ® symbol
- You can get a mark in a foreign country
How to register:
Step 1: Search through USPTO’s Database of Registered Trademarks
Check if there is a trademark like yours. This will help you avoid selecting a mark that is already in use. This cuts down a lot of the research needed to select your own original mark.
Step 2: Select a Mark
Your mark can be any word, slogan, symbol, design or combo that distinguishes your goods from another party. It could also be sounds, or colors, or even smells. Note that you must create an original mark. If it is like another trademark, your application could be rejected.
Step 3: Find a Trademark Attorney or Legal Service
You can find an attorney online by going to the American Bar Association’s Consumer Guide to Legal Help. There are also resources if you need a reduced or free option. If you need some pro bono help, click here. Your attorney will give you ample advice and will be equipped to handle the trademark application.
You can also register it yourself by filling out the USPTO application. Another option is to register it with a legal service (different than an attorney). However, you run the risk of submitting an invalid application when registering it yourself. You also run the risk of not having a mark that can distinguish itself from others. This can hurt you down the line. A licensed and experienced trademark attorney will be there for legal advice and any questions. You have the best chance of registering a trademark successfully with the help of an attorney. Your attorney brings experience and expertise and will be able to give ample help. If you are more thorough, that means less time for the USPTO to review it. So, lawyer up.
Step 4. Submit Your Application
After you have chosen your mark and hired an attorney, used a legal service, or registered it yourself, you will submit your application.
When USPTO receives your application, they will review your materials. Then, you will receive a receipt from USPTO with a special number attached. After, the application will then be reviewed by attorneys in the Trademark Office.
Step 5. Play the Waiting Game
This process could take up to three months! It is a long time, but you know attorneys have to do fancy lawyer stuff! You can call the USPTO at 1-800-786-9199 to check on the status of your application. Keep that special number they give you close by because that is what they will need to find your application. Then, if the lawyers approve it, your application will be published as a candidate for registration in its specific class. This allows others with similar goods and services to contest your trademark. If no one contests (fingers crossed), then you will receive a notice that your trademark is federally registered.
Step 6. Maintain your Name!
The process isn’t over yet. Think of your trademark as a car. You have to maintain and care for it or it will break down. So, you need to renew it after five years by filing an “Affidavit of Use.” Then, you will file another after 9 years. So, there you have it. That is how you register a federal trademark!