Trademarks: Before You Apply

Trademarks: Before You Apply

by Jane Haskins, Esq., April 2017

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Registering a trademark is a complicated process, especially if you're new to the experience. Before you apply, it's a good idea to familiarize yourself with what's involved and to get the right support.

Some business names get stronger trademark protection than others, and some names can't be registered at all because they are too generic. Fanciful or arbitrary names get the strongest protection.

A trademark can be a word, phrase, symbol or sound that you use to identify your business. Company names, product names, logos, package designs and taglines can all be trademarks. When you register a trademark with the U.S. Patent and Trademark Office (USPTO), you gain the right to use the trademark nationwide and prevent other people from using similar trademarks for the same types of goods or services that you offer. A registered trademark helps you build a strong brand and discourage competitors from copying you.

Trademark Search: Why It's Important

The USPTO won't register your trademark if it's likely to be confused with another pending or registered trademark. There's a likelihood of confusion if two trademarks look or sound similar AND they are used on related types of goods or services, so that consumers might be confused. Similar trademarks can be registered for unrelated products or services.

A trademark search saves time and money by spotting potential trademark issues before you file an application, pay a nonrefundable fee, and invest in marketing your business.

A basic trademark search will scan the USPTO's database for trademarks that match yours. If there's a matching trademark covering related goods or services, you probably will not be able to register your trademark. A more comprehensive trademark search also looks at state trademark registrations, directories and the internet to identify businesses that might have state or common law trademark rights. These rights may not defeat your trademark registration, but they could limit its geographic scope and make it harder to build and market your brand.

Preparing to File a Trademark Application

The USPTO accepts trademark applications online, or you can use a trademark filing service. Either way, you must provide:

  • Your filing basis. If you already use your trademark for business, you'll file as “use in commerce." If you plan to use your mark in commerce in the near future, you can file under “intent to use," but you must begin using your mark in the sale of goods or services and file another form before registration becomes final.
  • A drawing of your mark. If you register a standard character mark, your drawing will just be a typewritten word (or words). If you register a stylized/design mark, you must provide a .jpeg image of your mark.
  • A description of the goods and services that you use (or will use) your trademark on, and the trademark class those goods or services fall into. Goods are things that you sell, while services are things you do for other people. Accuracy is important because your trademark will only cover the goods or services listed on your application. The USPTO's online Trademark ID Manual can help with descriptions and classes.
  • A specimen that proves you are using your trademark on the goods or services listed in your application. If you are not using your mark in commerce yet, you will provide a specimen later.
  • A filing fee of $225-$325 per class of goods or services as of 2016.

Getting Help

The trademark registration process can be technical and confusing. Resources are available online, including through the USPTO website, but that doesn't mean you should go it alone. Trademark filing services can handle much of the paperwork for you, from conducting a search to filing the application. A consultation with a trademark lawyer can be invaluable if you are unsure about the strength of your trademark, likelihood of confusion with another mark, or the proper class of goods or services.

With planning, research and some legal help, your trademark application will be poised for success.

Trademark Formats

  1. Standard character format protects letters, words and/or numbers, no matter how they are displayed.
  2. Stylized/design format protects a specific design such as a logo, words or letters in a particular font, or both.
  3. Sound format protects a sound.

Trademark Specimens

For goods, a trademark specimen must show the trademark on products or packaging, (e.g., a label or tag). Marketing materials won't work. For services, the specimen may show your trademark being used to advertise the service, like on brochures or a website.