How to File a Trademark
Imagine spending extensive time, energy and finances on coming up with the perfect logo or design to represent your business. Then, consider how you would feel if your logo was appropriated by another business, perhaps your competition, and they claimed to have come up with the idea themselves. Wouldn't you have wished there was some way to protect your business from creative theft?
Luckily, there is. The United States Patent and Trademark Office (USPTO), an agency of the Department of Commerce, provides businesses and individuals with the opportunity to file a trademark – a type of intellectual property, such as a word, phrase, symbol, domain name or design that identifies and distinguishes the goods of one merchant's or manufacturer's products from others – with the federal government to safeguard unauthorized use of your brand. A trademark can be useful to companies that want to build brand awareness by incorporating a unique symbol or design that allows consumers to associate a company's product at the blink of an eye. For instance, Nike's checkmark-like 'swoosh,' and the Coca-Cola company's red and white logo are well-known images that help consumers distinguish their products from similar goods.
Similarly, a service mark, which is nearly the same as a trademark except it identifies and distinguishes the source of a service rather than a product, can also be filed with the USPTO. For example, Amazon.com is a popular e-tail site that is protected by a service mark, because the business uses the full name to promote their services on signs or in advertising copy.
The following guide will help you better understand how a mark qualifies for federal registration, the different types of trademarks, and how to go about filing them.
How to File a Trademark: Research Your Intended Mark
According to Christopher Schulte, partner and trademark attorney at the Minneapolis, Minnesota-based intellectual property law firm, Merchant & Gould, in order to successfully file a trademark for your business, your ownership over an idea or product has to be unique. An important step in making sure that your product or service is unique to other merchants' is research, so that you don't potentially get attacked later, he says.
'The biggest reason [your mark won't become registered] is that you're too close to someone else – it's called too ‘confusingly similar,'" Schulte says. 'If you don't search before you register, you might spend the money on filing trademark, or spend $5,000 for a sign on your door, and then later receive a letter from a lawyer telling you to stop.'
Besides a new mark being too similar to an existing mark, there are various other reasons why a new mark would be deemed ineligible. For instance, the USPTO will not register marks that contain the following: the name of a living person without their consent; the U.S. flag; various other federal and local government emblems; a name or likeness to a deceased U.S. President without his widow's consent; words or symbols that vilify institutions, beliefs, national symbols, or living or deceased persons; marks that are deemed immoral or scandalous, although the USPTO takes a liberal stance on these grounds.
How to File a Trademark: The Trademark Electronic Application System (TEAS)
For about a decade, the USPTO has enabled businesses to file trademarks directly over the Internet, and with relative ease, by using the Trademark Electronic Application System, or TEAS. This Web-based method of filing is now the preferred way to apply for a federal trademark, and it is surprisingly user-friendly. (Coincidentally, for those business owners who wish to register using paper filing, it will cost you $375, which is $50 more than the TEAS system.)
In order for your application to be considered by the USPTO for trademark registration, you must include the following information with your request: name of the applicant filing the application, or the name of the owner of the mark; a name and address for correspondence; a clear drawing of the mark (TEAS will generate a proper drawing for you, based on the information you enter); a listing of the goods or services; and the filing fee for at least one class of goods or services.
The TEAS system is governed financially by what is called a 'fee schedule,' which underlines the various trademark processing fees. The application fee for the standard TEAS form is $325 per class of goods or services – for instance, computer software is Class 9, and a t-shirt is Class 25 – but there is a form called TEAS Plus that can be filed for $275 per class of goods or services, but the requirements for approval are much stricter. Payments can be made electronically, or with cash or check, and unfortunately, the USPTO will not refund the filing fees for rejected marks.
TEAS also supplies online links to visitors that provide help sections for each of the application fields, validation functions that work to help you avoid omitting pertinent registering information, and immediate e-mail receipts with the serial number and summary of your trademark submissions. Plus, over-the-phone help is available nearly 24 hours a day, seven days a week (except from 11 p.m. Saturday to 6 a.m. Sunday), in case you still can't find what you are looking for.
Dig Deeper: How Trademarks Differ From Patents and Copyrights
How to File a Trademark: Types of Applications and Filing
Trademarks can be registered with either the Principal or Supplemental Registers maintained by the USPTO. Filing a trademark with the Principal, or primary, Register will grant you national recognition and protect you from infringement throughout the United States. Registering on the Supplemental, or secondary, Register, however, will only protect your mark as far as your common or state law. Nonetheless, holders of marks filed under the Supplemental Register may still sue for trademark infringement, if they so choose.
A business also has the opportunity to register a trademark based upon their planned use for it in the future, even if they are not using it in commerce at the time they register. According to Schulte, filing an 'Intent-to-Use' application will keep your mark 'pending until you show you use it.'
In order to qualify for 'Intent-to-Use,' a business must plan to use the mark in commerce, and file an Allegation of Use statement, which allows a 30-day opposition period where other businesses may claim that your proposed mark is 'confusingly similar' to their own. If your trademark is deemed unique, your application process will be 'Approved for Publication,' and you will have to wait for a 'Notice of Allowance' to be issued until you can officially use your trademark.
While many business owners hire attorneys like Schulte to assist in registering trademarks to ensure that their marks pass the test of uniqueness, he says that businesses have the option of researching themselves, as well. Plus, since the U.S.'s federal system for registering trademarks has become so reliant on the TEAS system, businesses have never had an easier time researching for unique names and designs on their own.
Dig Deeper: Types of Trademarks
How to File a Trademark: Be Specific In Choosing Your Mark
Another common trademark filing mistake, says Dan Abramson, intellectual property consultant and president at the San Francisco-based consultancy firm, Informationism, is that a business will choose a mark that is too generic, and it won't be accepted by the USPTO. He also recommends using the search function offered by the USPTO's website to clear up any potential mishaps.
'In trademark setting, the reason these people search is because it's a cost-effective thing to do,' Abramson says. 'Companies get very antsy when they start seeing their mark become generic. [For example,] when the Beatles went and registered a mark on Apple Records, they couldn't just register a generic term because apple is a fruit – they had to apply it to something, and they decided they wanted it on a record label.'
Dig Deeper: A Trademark Tale
How to File a Trademark: Jurisdiction of Trademark Registration
While filing a trademark with the Principal Register will grant you national recognition and protect you from infringement throughout the U.S., that protection will not automatically apply internationally. A mark on the Principal Register may be enough for the many small businesses who limit their commerce domestically, but for companies who wish to expand to a global market, additional certification is required.
The international trademark registration system is known as the Madrid system, and is administered by the World Intellectual Property Organization (WIPO), which is a specialized agency of the United Nations. The Madrid system offers businesses the possibility of filing one application through a person's national or regional trademark office, and if a mark is accepted, it will be granted international protection.
Dig Deeper: Naming Your Business in the Information Age
How to File a Trademark: Renewing Your Trademark
Schulte says that one convenient aspect of filing a trademark with the U.S. federal system is that, unlike a patent, a trademark can be renewed. The process is also fairly simple: 'After five years of your initial registration, you need to tell PTO, ‘Yes, it's still in use,' and prove use by sending in a label, for example,' he explains.
After the initial renewal, your business is required to renew again once every 10 years for subsequent renewals, if you choose to keep your company's trademark in affect. Today, the cost of renewal is $100 per class category that your mark is registered in, which can be a very cost-effective tool for maintaining your trademark over generations, for example.
Schulte adds, 'You can get a monopoly on your brand name forever, unless you don't use it, [which is] a rare thing, in a law.'
If you are new to trademark filing, the USPTO Trademarks homepage is a great place to start learning the process, as it provides useful information for all of your trademark needs.
For more information on filing a trademark overseas, the International Trademark Association is a helpful not-for-profit membership association, representing members from more than 190 countries worldwide.
This state-by-state guide to trademark filing may be helpful for small businesses who want to keep it local.