How to Register a Trademark

Registering a trademark is a simple process if you know the steps to take, however, without any idea of where to start the process can be intimidating. You can register a trademark by identifying your unique name and applicable class, filing a successful application with the United States Patent and Trademark Office (USPTO), and maintaining it afterwards.

What is a Trademark?

Registered Trademark SymbolA trademark is a tool for your business, brand, or logo just as a great knife is a tool for a chef. It gives you the assurance that your brand name and assets are protected against anyone trying to capitalize off of the reputation you’ve built and preventing them from tarnishing it.

The simple difference between trademarks, patents, and copyrights is found in what each one protects. A trademark is defined by the USPTO as, “a word, phrase, design, or a combination that identifies your goods or services, distinguishes them from the goods or services of others, and indicates the source of your goods or services.” A trademark, therefore, protects a specific mark of your brand, like your name, a slogan, or the design of your packaging.

A patent is defined by the USPTO as, “Technical inventions, such as chemical compositions like pharmaceutical drugs, mechanical processes like complex machinery, or machine designs that are new, unique, and usable in some type of industry.” This would protect a physical creation rather than a name.

A copyright protects ideas. It is defined by the USPTO as, “Artistic, literary, or intellectually created works, such as novels, music, movies, software code, photographs, and paintings that are original and exist in a tangible medium, such as paper, canvas, film, or digital format.” A good example of this is song lyrics or a book.

What are the Benefits of Registering a Trademark?

Registering a trademark could be a great benefit in many ways. A trademark helps to establish and add credibility to your brand’s reputation. It instills a sense of security in customers that they can trust the product they’re purchasing and discourages competitors from infringing on your brand. A trademark is a legal shield for your brand assets.

A registered trademark is also applicable across the nation, allowing you the opportunity to take your brand name nationwide without the fear that you’ll find a competitor in a promising market across the country with the same name. A trademark keeps doors open for you or your company to grow without the serious consequences of infringement.

Steps for Trademark Registration:

1.  Conduct a trademark search

The first step in the trademark registration process is to conduct a thorough trademark search. This search will help you identify if your brand name or mark that you’re interested in trademarking is unique enough to be registered. The USPTO will not approve registrations for generic or descriptive words, because they are so commonly used, trademark protections cannot be enforced.

The best practice in a name search is to not get too attached to one mark. It is recommended to create multiple options for a mark so as to give yourself a fallback if your preferred mark is already trademarked or is too similar to a different trademark that is already registered.

One thing to consider during a trademark search is the strength of your proposed mark. An arbitrary mark or a fanciful mark is going to provide the strongest bid in an application. For example, Apple is an arbitrary mark. The name of the brand has little to do with the actual product offerings of the company but it is memorable and unique to the company. Arbitrary marks, while strong, also present the challenge of requiring you to educate your consumers on your brand and establish an unnatural connection between an arbitrary mark and the products. A fanciful mark, like Nike, will require the same effort.

2.  Prepare and file your application

Once your application has been prepared, the next step in the process is filing it through the digital filing system, the Trademark Electronic Application System (TEAS). While registering, you will be required to select International Classes that match the goods and services you offer. These classes outline different goods and services, and you must select the classes that best match the goods or services your trademark will represent. Try to limit the classes you select to the categories that most closely match what you offer now or plan to in the future, without selecting too many.

There are two different options to file, TEAS plus or TEAS standard. TEAS plus begins at $250 for a single class registered. This is the least expensive option but it is also the most limited as you will have to choose from a pre-selected list of goods and services provided. TEAS plus will also require you to pay all of the fees associated with your application upfront and respond regularly to any USPTO communication you may receive through email.

TEAS standard is the most basic application, but it comes at a much higher cost per class. The standard option does not limit which International Classes you can select nor does it require you to communicate solely through email.

3.  Maintain registration

Maintaining your trademark registration is an easy step to overlook. Once your trademark has been registered, its protections will never expire, as long as you maintain control of the mark and meet renewal deadlines. After your trademark is successfully registered it is up to you to monitor any potential cases of infringement, report them and keep your paperwork up to date. Don’t let your trademark falter by being complacent with your maintenance. If you become aware of any potential infringement, it is your responsibility to contact an attorney and take legal action against it. In most cases, this infringement is halted with a cease-and-desist letter, but can occasionally require formal legal action.

Trademark registration provides valuable protections against infringement and helps to build customer loyalty. While the application process can seem daunting, it’s an important process to ensure that all trademarks registered with the USPTO truly are unique and can hold legal ground in the world of brands. Knowing how to define your goods and services and what is necessary for a successful application will set you up to qualify for your registered trademark in the least amount of time.

If you’re not sure where to start and are looking for guidance, or simply want the confidence of an experienced trademark attorney on your side, contact Gerben IP. We’re happy to help!

Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

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