Trademarks are a way that goods or services are identified as legitimate. While it might not always be noticed, it is a valuable addition to any business. Moreover, it allows your goods and services to be protected across the country, allowing you to expand without worrying about potential conflicts.
Additionally, the process is not that difficult once you know what you need to do. All you have to do is follow the guidelines and have some patience during the long process. So, if you want to learn about trademarking a name and protecting your goods or services, read on.
Trademark Basics
Many people think of a trademark as a way to own a word, even to the point of stopping others from using it. However, the scope is far smaller than that. In fact, the power only holds up within the same industry, such as two restaurants, products, or businesses. And even then, to have a trademark at the national level, more is required.
Even still, applying for a trademark can be incredibly useful. If you get a basic trademark, it prevents local competitors from using the name. Not only does it allow you to build a stronger brand, but it gives ample legal and counterfeiting protection. Plus, registering the trademark pushes it to the national scale.
In fact, if you only want a basic trademark, you have it the moment you start using your trademark. But those are limited rights, only applying to the area the goods or services are circulating. That is where registering comes in, which is mainly what this article will discuss.
Symbols
Trademark symbols are also important to know. By using trademark symbols, you are letting people know that you have a claim on the name. There are three basic symbols to keep an eye on, which include:
- TM is used for goods
- SM is used for services
- ® is used for registered trademarks
You can use the first two, TM and SM, whenever you want. However, the registered symbol can only be used once registration is officially done with the United States Patent and Trademark Office (USPTO).
Scope
There is one thing to keep in mind when it comes to trademarking a name. The name must be connected to goods or services. Registering is not possible at all unless you have attached the name to something, though it is not limited to a single good or service.
It is important to know what it is your name is attached to and have relevant information at hand. Providing details on what goods or services the name is attached to will make the application more likely to succeed. Moreover, during the application, do not provide additional goods or services for future protection. Otherwise, it might be denied.
Strength
One important step of any trademark, especially when it comes to a name, is for it to be distinctive. You want it to stand out since it will be one of the things people know about your product, service, or company. Moreover, distinctive trademarks are stronger, making it easier to stop others from using them legally.
There are many things that can make a trademark strong or weak, but the USPTO outlines some of them on its website. If you are looking to make a strong trademark, consider the following:
- Fanciful Trademarks: Invented words. There are many of these out there, and they exist only for the good or service they represent. Exxon and Verizon are two such examples.
- Arbitrary Trademarks: Words that have no relation to the goods or services they are assigned to. Apple is a great example. If it were an apple orchard, they could not use it as a trademark, but since it is used for a technology company, it is a strong trademark.
- Suggestive Trademarks: Words that suggest something about the product, such as what it does or its quality, without explicitly stating it. Coppertone is one example, while Android is another. One hints at what the product does, while the other is related to the technology field that it exists in.
On the other hand, there are also weak trademarks. Keep in mind that these are not only weak but might not be registrable. They include descriptive trademarks, such as “creamy” for a yogurt brand. There are also generic trademarks that hit the nail on the head, like “computers” for a computer company.
Why You Should Trademark a Name
The most basic reason to register is for protection. The legal protection provided is a great way to protect your brand. It also becomes far-reaching, allowing you to expand without having to worry about potential conflicts down the road. Here is a list of benefits other than legal protection:
- Your trademarked name will appear in a database to inform others it is taken
- It can be used as a basis to file for foreign trademark protection
- It allows any lawsuits to be brought up in federal court
- You gain access to the registration symbol
- The registration helps prevent the importation of goods with infringing trademarks
There are many ways to receive a trademark. Common law rights only apply to the geographic location, while state and federal trademarks increase the scope and power of protection. You can also apply for trademarks in other countries, though there is no worldwide trademark. Additionally, if you keep using it, it can last forever.
Steps for Trademarking a Name
Now that there is an understanding of the trademark process, it is time to get down to what you actually need to do. Fortunately, the process does not have to be terribly difficult. The first step is searching for similar trademarks, followed by the application. The details are below.
Step 1 – Search for Existing Trademarks
According to the USPTO, one of the main causes of rejection is having a similar name to an existing trademark. It is not just exact matches, either. In fact, any name with the potential to cause confusion runs the risk of rejection. The goal is to prevent customers from thinking unrelated products come from the same company.
That is why it is important to do some searching before committing to the process. You are looking for exact or similar trademarks. There are plenty of resources to help, but some of the common places to search include:
- Trademark Electronic Search System (TESS)
- State trademark databases
- The internet
It is relatively easy to find officially registered trademarks since they are within TESS. However, it can be more difficult to pin down local businesses. It is important to do as much research as possible. Of course, the trademark examining attorney assigned to your application will perform a search as well, but it is limited to registered trademarks.
Step 2 – Prepare for Your Application
The very first thing you need to consider is your mark. When you submit an application, you must submit the mark you wish to protect. It can be as simple as the name written as plain text for a name. You are essentially applying to a trademark without regard to styling.
You will also need to identify the goods or services in which you plan to apply your mark. After all, you stand a good chance of rejection without the appropriate goods or services.
Moreover, the application process also requires a “basis” for filing. The basis for filing is the legal reason you are allowed to federally register the trademark. Common filing bases include but are not limited to:
- Use In Commerce: Using it when selling or transporting goods out of state. The same is true for services. A good example is food that might be grown in one part of the country but be sold all over. For this type of basis, you will need to provide proof it is used in commerce, along with other information.
- Intent to Use: If you have not started using it yet but intend to, this is the right choice. You must plan to use it within three to four years, and you cannot actually move from the application to registering the trademark until it is being used in commerce.
You might also need to get an attorney. If you live in the US or its territories, it is not required, though it is encouraged by the USPTO. On the other hand, if you live elsewhere, an attorney that is legally allowed to practice in the US is required for the application process.
Step 3 – Apply for the Trademark
When you have finished preparing, it is time to apply for the trademark. The first step is setting up an account at USPTO.gov. Not only will it give you access to the Trademark Electronic Application System (TEAS), but you can find answers to any remaining questions on their site.
Once you have an account, you can file the application online. Keep in mind that it requires a non-refundable application fee. Since going in unprepared could mean rejection and losing the application fee, make sure to check all the boxes before jumping into things.
After applying, the next step is to wait. Using the Trademark Status and Document Retrieval (TSDR) system, you can monitor the entire process. In fact, you need to check at least every six months to avoid missing a deadline. There might be more than you need to do or think about, so regularly keep an eye on things.
Step 4 – Work With the USPTO Examining Attorney
The USPTO will examine your application to ensure everything necessary is done, which might take several months. Once that is determined, it is given a serial number and sent to an examining attorney. The attorney then reviews the application. The review includes things like:
- Ensuring it is compliant with all rules and statutes
- Making sure the application fee was paid
- Searching for conflicting marks
- Examining the application itself
- Reviewing of the drawing and any specimen
If things do not go as planned and changes need to be made to the mark, a letter (office action) will be sent out. However, if the changes made are minor, you might receive a phone call or email.
A rejection at this stage is not necessarily the end of the process. If you receive an office action, you need to respond within six months. If you do so, the process can carry on. Otherwise, it is considered abandoned.
Step 5 – Approval or Denial
The final step is where it all comes down to approval. If things go well, the mark will be approved for publication. In that case, those who think it might damage their business have 30 days to speak out. Opposition can extend the time until it receives final approval, but getting past it moves the process to the next stage of approval.
You need to continue to monitor the process every step of the way using the TSDR system. The next thing you will receive if things continue smoothly is a certificate of registration. An exception to that is if the basis for filing is based on intent to use. If that is the case, you receive a notice of allowance, but you will be required to:
- Use the mark in commerce and submit a statement of use (SOU) within six months
- Request a six month extension if you do not use it in commerce within six months
There is an additional review if a statement of use is sent in. Additionally, things might change depending on whether the extension filing is done in a timely manner. However, the end result is eventually the same, approval or denial.
Step 6 – Maintain the Registration
Keeping the registration “live” requires the filing of maintenance documents. In fact, if it is not done, it will cause the registration to expire or be canceled. If that happens, you will have no choice but to begin things anew, and there are no guarantee things will not change during the next application.
You also need to keep an eye on things, checking in annually to be safe. You can do that using the TSDR system. There are specific dates that you want to pay close attention to listed on the USPTO’s site. Also, make sure to keep your physical registrant address and email address up to date at all times.
Things You Might Need to Know
The big steps above will take care of most of what you need to know. However, there is other important information that might help. For instance, how much the process costs, a timeline, and some common problems. Here is a rundown on some things you should know:
- Cost: There are two filing options, which are TEAS Plus and TEAS Standard. The plus is $250 per class of goods or services, while the standard is $350. Therefore, it can add up quickly if you have a lot of goods or services. There are also fees attached to maintaining your registration.
- How Long It Takes: The time it takes can vary greatly, especially if you are applying with intent to use. However, the usual amount of time is between 12 and 18 months.
The process can take a long time, but it is worth it if you want the registration and additional protection. Moreover, each step takes less time, so you can see progress step by step as you go.
Common Problems
There are many common problems, including those that are fixable and those that are not. A few examples of both will be featured below, though you can visit the USPTO’s official website to see more on the common problems. To start, here are some mistakes you might run into that can be fixed:
- Descriptive trademark name
- The use of someone else’s name without their consent
- The trademark only has a surname
The fixable mistakes are things that can be changed without starting the application over. However, there are many unfixable mistakes that can bring the process to an end. Make sure you avoid these things if possible:
- The wrong party is identified as the trademark owner
- Incorrectly identified goods and services
- Conflicting with another trademark
- Generic or commonly used trademark names
If a mistake cannot be fixed, then the application will come to an end. Not only does that require you to start everything over again, but it means you have to pay the application fee once more.
Final Thoughts
The process for getting a name trademarked has some key information you need to keep in mind. However, as long as you prepare well, there is no reason the process should fail. Moreover, once you get the ball rolling, you start to receive more potential protection. It is well worth the time, and it will only strengthen your brand.
