- Choose a strong mark from the start.
- Conduct a comprehensive trademark search.
- Submit your application to the USPTO.
- Respond to any Office Actions issued by the USPTO.
- Maintain your registered trademark.
1. Choose a Strong Mark
A trademark is often the first interaction a person has with a business. A strong mark should both protect against infringement and establish brand recognition and loyalty. Because of its importance to your business, the process to create a trademark should be carefully considered from the start. The USPTO will not approve registrations for generic or descriptive words, because they are so commonly used, trademark protections cannot be enforced. For example, Delicious Pizza will not gain trademark registration because there is no way to police the use of “delicious” by other restaurants or food products.
Stronger marks often have no relation to the product or service they represent. Arbitrary trademarks, for instance, are commonly used words, but not in conjunction with the goods or services provided. Apple is a well-known arbitrary mark. While ‘apple’ itself is a common word, it bears no relation to the tech products it now represents. Fanciful, or invented, trademarks provide even stronger protection. Nike and Verizon are both considered fanciful trademarks. One thing to consider, however, is that while arbitrary and fanciful marks are considered the strongest, they also require more consumer education and advertising to inform the public of their product or service.
It may be tempting to fall head over heels for one potential trademark, but it’s best not to settle on only one potential mark just yet. Create several possible marks, share with friends and family, and ask for feedback. Then narrow your list down to not just your first choice, but a handful of other options as well, before moving on to Step Two.
2. Conduct a Comprehensive Trademark Search
Once you’ve selected a strong mark, you need to conduct a comprehensive trademark search. The purpose of the search is to determine if any other business or individual is using a confusingly similar mark. The USPTO will not approve a trademark registration for any mark if a similar mark exists. That’s why it’s important to conduct this search before you submit your application and pay your fees to the USPTO.
If you find that your mark, or one that could cause the likelihood of confusion, is already in use, you have some options. The first is to simply make changes to the mark you’ve chosen, so that it cannot be confused without another trademark in the marketplace. You could also refer back to the list you created in Step One. While they may not be your first choice, chances are you have some pretty good options there that may not already exist. Select one or two from your list and complete a comprehensive search on those as well. If you find that one of your choices is available, you can more forward to Step Three. If not, you make have to go back to the drawing board to create a stronger mark. The important thing to remember is to not move forward to Step Three until you are sure that your trademark is available for registration.
3. Submit Your Application with the USPTO
You might have heard that your trademark will have some protections simply by using it in the marketplace. While that is true, those protections are extremely limited. For instance, common law trademark rights will only protect your brand in the small geographic region where your business is located. If you plan to do business outside your region, with an online retail shop, for example, you may find that you may have little recourse for infringement disputes that arise in other areas. In order to have the presumption of nationwide validity, you must register your trademark with the USPTO.
As of October 2019, the USPTO no longer accepts paper trademark applications. Each registrant is now required to use the Trademark Electronic Application System, or TEAS. You’ll also be required to select International Classes. These classes outline different goods and services, and you must select the classes that best match the goods or services your trademark will represent. While you may be tempted to select a wide number of International Classes, you should limit your selections to the goods and services you plan to offer now or in the very near future.
The application you use will be based upon the classes you will select and the communication method you prefer. The TEAS Plus application is the least expensive, but the goods and services you choose will need to be selected from a much smaller, pre-selected list. You’ll also be required to pay all your fees at the time of filing and respond to all communication with the USPTO through email. The TEAS RF (Reduced Fee) application also requires you communicate through email alone, but you can select any of the 47 International Classes to include in your application. Fees for this application are not required when you file. The TEAS Regular is the most basic application, but it comes at a much higher cost per class. Though you’ll submit your application online, you are not required to communicate only through email. You can also select from any of the International Classes.
The date that you file your trademark application will become your priority date. This means that anyone looking to file a confusingly similar trademark after that date will likely not be approved. In order to increase your likelihood of approval and to avoid potential infringement, file your trademark application as soon as possible. This will lock in your priority date and ensure you’ll get first priority over the mark.
4. Respond to All Office Actions Issued by the USPTO
Once your application has been submitted, it will be assigned a USPTO examiner. As this examiner reviews your application, it is not uncommon for the USPTO to issue Office Actions. These Office Actions are essentially a way to notify you of a problem in your application. Common reasons for Office Actions include omissions or errors in your application or notification that your application cannot be accepted as is, usually because it is confusingly similar to an existing mark.
It can be stressful to receive an Office Action from the USPTO, but it’s important to know that these are fairly common and do not necessarily mean that your trademark will ultimately be rejected. However, it’s critical that you respond to any Office Actions appropriately and in a timely manner. Typically, the USPTO allows six months for you to respond to each Office Action, but don’t wait until the last minute to reply. Often, the documentation needed can take time to gather, and additional researching may be needed on your part. Work to develop your response should begin as soon as you receive the Office Action. Failing to meet Office Action deadlines or failing to fully meet the requirements outlined in the Office Action could result in rejection of your trademark application.
5. Maintain Your Trademark Registration
Your trademark rights are a valuable asset to your business, but only if you enforce them. The USPTO examines and approves trademark registrations, but they do not monitor their use or notify you of potential infringement. Once your mark has been registered, it’s up to you to ensure that your mark isn’t being used without your permission. If you find potential infringement, it’s critical to take immediate action to stop it. Often, a cease-and-desist letter is all that is needed to put an infringer on notice, but occasionally, more formal legal action is required.
Another aspect of maintaining your trademark registration is to meet the renewal deadlines set by the USPTO. For new trademarks, your first renewal date will occur between the fifth and sixth year, and then again between the ninth and tenth year. After that, renewals will be required every ten years. As long as you maintain control of your mark and meet renewal deadlines, your trademark protections will never expire!
Taking the Proper Steps
You’ve worked hard to create and grow your brand, so it’s important to ensure that your hard work is protected. Trademark registration provides valuable protections against infringement and helps to build customer loyalty. Once your trademark has been registered, its protections will never expire, as long as you maintain control of the mark and meet renewal deadlines.
If you’re not sure where to start, need guidance or want to consult with a trademark attorney, Contact Gerben Law Firm. We’re happy to help!