In this article, we look into how to register a trademark with the United States Patent and Trademark Office (USPTO). Thankfully, this is a fairly easy and inexpensive process to follow:
Come up with ideas for a name, wording, phrase or image for you company, brand or product — what you want to protect with a trademark
Conduct or search, or have an attorney do this, to ensure there are no conflicting or competing trademarks.
If there’s a potential conflict, see if it’s in the same trademark class or not -- there are 45 different classes, so there might be similar names already protected, but they could be in a different category and you could be good to get your trademark;
Once you are sure on the name to register, make sure you've got everything you need to make an application (again, an attorney can help with this);
Next, submit an application through an attorney or by using the USPTO’s online TEAS Plus system;
Wait while the USPTO conducts its trademark examination, publishes the trademark for feedback/opposition, and finally — assuming there is no opposition — the USPTO issues a Notice of Allowance, for the applicant to demonstrate the trademark’s public use for commercial reasons.
How long does it take to register a trademark? Going through this process usually takes 10-12 months, providing no problems are encountered.
Step 1: Come Up With A Trademark
To start, think of a specific identifier you want to associate with a product, service, brand, company, etc . The identifier could be a company or product name, another word (made-up words are great for this), a phrase or slogan. Or it could be a particular design or image -- like a stylized logo or logotype.
Step 2: Conduct A Trademark Search
Before submitting a trademark application, it is always useful to conduct a quick check to make sure there aren't any identical or almost identical trademarks already out there that could prevent your application from being successful.
The USPTO will have a problem with a trademark that turns out to be identical to one that already exists; it may also reject your application if it decides that your trademark is ‘confusingly similar’ to an existing trademark.
Having to suddenly rebrand your company and/or its major product or service can be a costly and time consuming hassle. That’s why we definitely recommend that you do a search before you do any major branding, promotional or advertising efforts. If you want the name of your company to have trademark protection, then you should do this step even before you form your new legal entity.
A trademark search is something an attorney can do, and shouldn't take more than a couple of hours, or you can start a search yourself using the USPTO Trademark Search Tool.
A properly done search should indicate whether or not there is any direct conflict with any corporate entities or product names that might be a problem. After checking the results, then you can decide whether it makes sense to proceed with the trademark application.
Step 3: If Someone Already Has The trademark, See If It’s In The Trademark Class You Want. If Not, You May Be In Luck!
Now this is where it might get confusing if you’re not working with an attorney.
In the United States (like the rest of the world), you apply for a trademark in one or more specific international classes – 45 different categories that cover all the different types of goods and services (here’s a complete list if you’re curious). And you only get protection for your trademarks in the class or classes you apply and get registered for.
For example, if you have a trademark for “Apple” in the clothing category (IC 25), that won’t stop someone else from getting the trademark for “Apple” in the musical instruments category (IC 15). You or an attorney need to determine which class or classes to place the trademark in, alongside a suitable set of descriptions of the goods and/or services associated with the mark.
It is possible to have the same or a similar name, providing you are applying for protection under a different category than another brand, company or product name. An attorney can help you determine whether this is likely to cause any problems as you go through the registration process.
Step 4: Get Everything You Need For A Trademark Application
Now that you’ve made sure you aren’t directly competing for a trademark, either yourself or an attorney need to check everything the USPTO needs in order to submit a successful application. The last thing you want is to spend time submitting more information after being told they don’t have enough to process an application.
Step 5: Apply For A Trademark
Applications are usually submitted using the USPTO’s online TEAS Plus system. If you do it yourself, the USPTO fees may be as low as $225 for each international class of trademark you are applying for. If you use a lawyer, you’ll likely pay more to account for the legal services.
Once the application is complete, your trademark application is issued a serial number and placed in a queue awaiting examination.
Step 6: Trademark Examination; Publication For Opposition; Notice Of Allowance
After a wait of several months, the USPTO Examiner (a Trademark Examining Attorney) will decide whether there are any potentially conflicting marks. If there are any problems with what has been submitted, the Examiner could find that your proposed trademark would “likely to cause confusion to the consumer.”
Rejections also occur when an Examiner finds a proposed trademark is “merely descriptive”. For example, if you were to apply for the trademark “Very Fast Computer” and your description of the good in question is “a very fast computer”, your trademark may very well get rejected as being “merely descriptive”. If your trademark is rejected, you can frequently find a solution by working with an experienced attorney to modify your trademark so it can pass this stage in the process.
If there is no reason to prevent it going forward, then the proposed trademark needs to go under public scrutiny which is when it is “published for Opposition.” This is done in the next edition of the USPTO Official Gazette, which is published online.
If there is an opposition at this stage and anyone in the public believes that your proposed trademark is infringing something, a complaint can be lodged with the Trademark Trial and Appeal Board. An Opposition is a quasi-judicial procedure before the Appeal Board that can take several years to run its course. Fortunately, this doesn’t happen very often, and a smart attorney should be able to help an applicant avoid this fate.
Assuming the client’s mark passes the Publication for Opposition hurdle successfully, the Examiner will issue a Notice of Allowance.
At this time, if you did not show that the trademark is already being used in commerce as part of your initial application, the USPTO will give you six months to provide evidence of use of the mark in commerce if you did not do so. Evidence of “use in commerce” then needs to be compiled and submitted and can include anything from websites to Facebook advertising. Providing the Examiner finds this acceptable, the trademark can proceed to registration.
Step 7: Finally Getting Registered
After all the above steps have been successfully completed, the Examiner will allow the mark to be officially registered.
An official registration number is assigned to the mark, and an official registration certificate is sent to the owner. The owner is then authorized to use the ® symbol notifying the public that the mark is officially registered with the USPTO and is entitled to the rights and protections afforded by such registration.
How Long Does It Take To Register A Trademark?
Registering a trademark does take time. Assuming there are no objections by the Examiner and no opposition to registration by the public, the registration process takes 10 to 12 months. Obviously, any rejection by the examiner or an opposition will extend the timeline by a minimum of several months.
Once this process is complete, you will be the owner of a federally registered and protected trademark.
This is the second in our series of articles about Trademarks. Our first was about what Trademarks are and why you should register them -- read it here.
Disclaimer: This article constitutes attorney advertising. Prior results do not guarantee a similar outcome. MGLS publishes this article for information purposes only. Nothing within is intended as legal advice.