The 5 Things You Must Do to Protect Your Trademark

The 5 Things You Must Do to Protect Your Trademark

by Jane Haskins, Esq., June 2016

As soon as you begin using your business name and logo, you're building common law trademark protection for them. This can help you if someone infringes your trademarks locally, but may not be of much use if you expand your business or if someone from out of state starts using your trademark on the internet. To give your trademarks stronger nationwide protection, you must register them with the U.S. Patent and Trademark Office (USPTO).

A successful trademark registration has several steps: research, an accurate application, follow-up, and regular monitoring. Here's an outline of the steps you need to take to secure and maintain your trademark.

1. Do Your Homework

The USPTO won't register your trademark if there is a “likelihood of confusion" with another registered trademark. A “likelihood of confusion" often arises when two marks are similar and they are used for similar goods or services. To minimize the chance that your application will be rejected for this reason, you must conduct a comprehensive trademark search before applying for federal trademark protection.

You can search federal registered trademarks yourself using the USPTO's Trademark Electronic Search System (or TESS), or you can hire a company like LegalZoom to perform the search for you. A comprehensive search will also include searches for trademarks that are registered with state governments and trademarks that have common law protection.

2. Prepare and File a Trademark Application

If your trademark search doesn't reveal any conflicts with pending or registered trademarks, the next step is to file a trademark application through the USPTO's Trademark Electronic Application Service (TEAS). You'll be required to provide a “picture" of your mark as it appears by itself, and a “specimen" such as a label or brochure that shows how you use the mark in your business.

You must also identify the types of goods or services that you use your mark for. It's important to be accurate because you will only have trademark protection for the types of goods or services you list in your application.

Once your application is complete, you may submit it electronically with a nonrefundable filing fee, which is currently $225-$325 per class of goods or services registered.

3. Respond Promptly to Office Actions or Oppositions

Your trademark application will be assigned to a USPTO examining attorney, who will review it and send you an official letter called an “Office action" if there are questions or concerns. Office actions are not unusual, and it's important to take them seriously and respond by the specified deadline. If you miss the deadline, your application will be considered abandoned.

To respond to an Office action, you must address the problems to the satisfaction of the USPTO examining attorney. Once all issues have been resolved, notice of your trademark will be published in the Official Gazette and anyone who objects to the trademark registration may file an opposition.

Office actions and oppositions may raise complex legal and technical issues. Because you risk having your application refused, you may want to get advice from a trademark lawyer.

4. Monitor Your Trademark

Once your trademark registration is approved, you can start using the registered trademark symbol, ®. But your efforts to protect your trademark shouldn't end there. The USPTO registers trademarks, but it does not enforce them—that's up to you.

One way to protect your trademark is to monitor USPTO filings and oppose any applications to register trademarks that seem similar to yours. Another is to be assertive if you learn of another company that is using a name or logo that's similar to your registered trademark. Sometimes, a simple “cease and desist" letter will stop an infringer, but, if that does not work, your federal trademark registration gives you the right to file a lawsuit in federal court.

5. Maintain Your Trademark

Trademark registrations last for 10 years and are renewable for additional 10-year periods, but you must file maintenance documents between the fifth and sixth year after registration, between the ninth and tenth year after registration, and every 10 years after that. If you miss a deadline, your trademark registration will be cancelled.

With careful research and a well-prepared application, you'll be on your way to having a registered trademark. And, once your trademark is registered, be sure to monitor it and file maintenance paperwork to ensure that your hard-earned trademark protection lasts as long as your business.

Ready to protect your trademark? LegalZoom can help. LegalZoom will help you register a trademark online easily and affordably. Once registered, we can also help you monitor and maintain your trademark.