Your business is exactly that: your business. You dreamed up the idea, created the brand, and have begun building something you can be proud of. But wait, what’s this? Another small business has come along and stolen your brand name, ripped off your idea, and destroyed your dreams.
While your business is something personal and special to you, it’s also a legal piece of intellectual property. This means it needs legal protection. This is where a trademark comes in.
What is a trademark?
One of the first steps when starting your business or building your brand is coming up with a business name, designing a logo, and possibly even coming up with a slogan. Before you publicize any of this, you should take steps to protect your name and logo. You also need to make sure your business and brand don’t interfere with other trademarks, which could get you into a lot of legal trouble.
A trademark does exactly this. According to trademark law, a trademark protects the brand, logo design, and business entity as a whole from being unlawfully imitated. This means protecting the very thing you’ve built.
Copyrights are often confused with trademarks. Copyrights apply to music, movies, television, and other forms of art. So unless you’re in the business of creating original art, you likely don’t need to concern yourself with a copyright.
How to get a trademark
Trademarking is clearly important. Unfortunately, getting a U.S. trademark is an in-depth and lengthy process. But it’s not impossible to do on your own.
Here is the full application process for registering your trademark. Again trademark registration in the United States is rather complex, so be prepared to either hire an attorney or spend a lot of time and be very thorough.
Step 1: Determine whether you need a trademark
A trademark should be a sign, design, sound, or expression that’s representative of your brand, product, or business. Be sure you’re not confusing it with a copyright or patent.
Again, copyrights apply to artistic creations. Patents apply to products, giving the inventor of the original product legal protection in the event someone tries imitating it. If your business is selling something original, you’ll also want to pursue patents to ensure your goods aren’t ripped off.
Step 2: Identify your mark
Trademarks aren’t a one-size-fits-all solution for protecting your intellectual property. There are different types of marks for different types of intellectual property, with each type offering more specific protection.
Determine which of the three mark formats applies to your trademark:
- Standard character mark: This trademark protects any combination of words, letters, or numbers, without consideration of the font or style (for example, the name of a business). It provides broad rights for use in any form of presentation.
- Stylized/design mark: This applies to a mark with a design you’d like to protect (i.e., a logo). The design may have letters or not.
- Sound mark: This is for a tune or jingle that’s representative of a brand. For example, the MGM roaring lion sound falls under a sound mark.
No matter what kind of business you’re starting, you’ll almost always need a standard character mark and design mark, as your business should have a name and some kind of logo.
Step 3: Decide if you need an attorney
Do you need an attorney to help you in the process of researching, filing, and protecting your trademarks? Technically, you don’t. But it might be a good idea for various reasons:
- While you can conduct a search for competing trademarks in the Trademark Electronic Search System (TESS) database, a trademark attorney can conduct a more expansive search that goes beyond the TESS. Your attorney can identify potential problems with your mark and inform you whether you should apply at all.
- Filing for a trademark is a legal process. It has legal requirements and deadlines, and if they’re not met, your money will not be refunded. It may be worth the flat fee many attorneys charge to file correctly the first time.
- If an Examining Attorney (representing the U.S. Patent and Trademarks Office) sends you communication, you may need the assistance of an attorney to respond properly.
If you choose to hire an attorney, they can help you manage all of the pursuant steps on this list and offer any additional legal advice you may need. (For example: Does a t-shirt with your brand require a trademark or patent?)
Step 4: Show ’em the goods
Your logo, name, or jingle will represent a particular good or service, and you must select a legally acceptable identification for your goods and services. This means choosing a name that’s not infringing on another trademark and is not similar enough to cause brand confusion. Doing this improperly may prevent the registration of your mark. Here are some tips for properly identifying your mark:
- Goods vs. services: Do you sell goods (actual products, whether physical or digital) or provide services (some form of assistance or consulting)?
- Properly define your goods or services: What are the goods or services you provide? Search the ID Manual here by entering relevant keywords in the search box to find your product or service. Search under “Basic Fields” to find the appropriate ID for your service or good. If you do not find it, you will have a space to describe your product or service when you’re applying with the TEAS Form (and not the TEAS Plus, see Step 7 for more details).
Still confused? Watch here for an in-depth video from the USPTO explaining the identification process.
Step 5: Ensure you’re not copying anyone
It’s time to check whether there are other companies, people, or brands out there whose mark has a high “likelihood of confusion” with yours. This is where the trademark database comes in.
It’s important to remember that it’s not just about searching for people with the same mark or name, but also uncovering those who are similar. If someone has already registered or applied for a mark that is the same or similar, and it’s used for related products or services, it may be grounds for the USPTO to turn down your application. The last thing you want to do is infringe on a trademark.
Searching the TESS database (click the “TESS” Icon under “Tools”) can be a little overwhelming at first. Take note of the following functions, as they’re likely what you’ll need when looking for other trademark owners.
- Basic Word Mark Search: This is fairly simple and allows you to search for business names and slogans, not designs.
- StructuredWord or Design Mark Search: This function allows you to search for both words and designs (using the Design Code Manual to find designs).
- Free Form Search: This is a more advanced search based on Boolean logic. It has several search fields and could be difficult for beginners to use. For a more in-depth guide to searching for marks check out the TESS Help Menu.
During your trademark search you may be disheartened if you come across a trademark similar to the one you want to file. Don’t lose hope — trademark rights don’t last forever.
Federal trademark law requires you to file for a trademark renewal by the end of the sixth year. Once the tenth year passes, the trademark is no longer valid. Check the trademark status in the database and see if it’s alive or dead. If it’s dead, you could be in luck! If it’s live, it’s time to pivot and figure out a new trade name to register.
Keep in mind that not everyone chooses to register their trademark with the USPTO, so not all relevant results will appear in TESS. However, it’s still important that you check for unregistered marks since the owners often retain the rights to them whether they’re registered or not (hiring an attorney may be extremely helpful in this regard).
Step 6: Know your basis for filing
Before applying you should know your basis for filing the mark. There are two options:
- Use in commerce
- Intent to use
Essentially you’re confirming whether you’ve used the mark in sales and products already or intend to use it (this means your product or service is essentially market-ready). “Statement of use in commerce” must be established with an example in which the mark was used, and “intent to use” will require an additional form and fee.
Step 7: File the trademark application
You can finally begin filing your application through the Trademark Electronic Application (TEAS) System. You will begin by filing your initial application form here, and can choose between the TEAS Plus Form and the TEAS Form.
The TEAS Plus form has a lower filing fee ($275 per class of good or service), but it has stricter requirements than the basic TEAS form. To use the TEAS Plus, you must:
- file a complete form
- select your goods or services from the list on ID Manual (described in Step 4 — there is some room for customization, but you cannot write a “free-text” entry describing your product)
- pay full fees at the time of filing
- file later communications regarding the application through the TEAS
- receive all communications via email
The TEAS Form has an application fee of $325 per class of good or service, and is your option if you can’t satisfy the requirements of TEAS Plus. Here are the fee requirements and payment options.
When applying, keep in mind that:
- The filing process may have a few strict deadlines.
- Your filing fee will not be refunded.
- Your data will become public once filed.
Step 8: Sweet success
The review process will take several months. If they do not have any objections to your registration, you will receive a notice of publication with the date of publication. After it’s published, any party who feels they may be damaged by your mark will have 30 days to take action.
If no opposition is filed (or if it fails), you enter the next step of registration and a certificate of registration will be issued. Within about 11 weeks the USPTO should register the mark and issue you a registration certificate.
If you filed with an intent to use, you will receive a notice of allowance, and will have six months to begin using the mark in commerce, or you’ll need to request a six-month extension.
Even after your application is approved,you must still regularly file maintenance documents to keep the registration live.
Making your mark
With your trademark approved, it’s time to make some waves. Set up your domain name, throw your company name on business cards, and shout it from the rooftops. You’ve earned this moment, so bask in it.
Remember that your trademark will expire, so mark your calendar and set reminders for the fifth year. You’ve made it this far, the last thing you want is to lose your trademark. Now, go make your mark on the business world!