First thing, you have to figure out if it makes sense for you to register a trademark, and what is trademarkable.
According to the US Patent and Trademark Office’s Trademarks (USPTO), a trademark is “a word, phrase, symbol or design, or combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.” A service mark, distinguishing a service, is often referred to as a trademark as well.
The general benefit of registering your trademark is the enhanced protection it affords against infringement. A federally registered trademark will protect you nationwide and, with an additional filing, internationally. Before we get into the particulars of actually registering a trademark, the USPTO has information on what a trademark is and why you should register one.
Once you have a trademark you want to register, the actual process is relatively simple. Though the USPTO requires a high degree of accuracy in any registration application, and that’s why going to a lawyer or to a professional register service is a popular choice, anyone can do it.
There are three principal steps to complete a registration application:
- researching whether there is already a similar trademark,
- figuring out under what basis to file, and
- which type of filing to use.
The USPTO maintains a search tool on their website to help identify any possible TMs that are currently registered which could cause your application to be refused: The Trademark Electronic Search System (TESS).
Your search should start from here (there are other places). If a possibly conflicting trademark is found, the entry in TESS will show some basic information concerning the registration: the trademark itself, the description of the trademark (including the class, a categorical classification based on international trademark standards), the filing date, the owner, the type of trademark, and whether the trademark is live or dead (and if dead, the date of abandonment).
While a dead trademark is a good indication that a prior registrant won’t challenge your application, submitting a correctly completed application is necessary to ensure the best chance of registration.
Sample results from a trademark search on Markify
If you can’t find any conflicting trademarks, you’ve got a solid chance at a successful registration. However, remember that trademark law allows for two methods to establish trademark protection:
- by being the first-to-file with the USPTO (which affords nationwide protection), and
- by being the first-to-use a trademark in a particular geographic area.
Being the first-to-use in a geographic area only protects you from infringement in that area and in areas into which you would be expected to expand. This means that even if you successfully register a trademark with the USPTO, you can’t prevent a business that has been using the same (unregistered) mark in a specific location from continuing to use it there.
For example, say you wanted to start a chain of pizza parlours named Bob’s Pizza. A search on TESS doesn’t turn up a direct match. However, if Bob from Coeur d’Alene has already been operating a pizza shop under that name, you would not be able to stop him from continuing to do so around the Coeur d’Alene area and within a reasonable geographic radius.
2. Basis to file
The second part to registering a trademark is choosing under what basis to file. Unless you are looking to register domestically a trademark already registered internationally, you will likely only need to consider whether to file under section 1(a), use-in-commerce, or 1(b), intent-to-use.
To file under 1(a), the trademark must currently be used in commerce. Filing an intent-to-use application under 1(b) requires a “bona fide intent” to use the trademark in commerce within the next three to four years. This means that you have a good faith intention to use the trademark.
A specimen, such as a screenshot, showing how your trademark is, or will be, used must be included in your application. A mere drawing of your trademark does not qualify; the specimen must show how the trademark is, or will be, used in the manner associated with the good or service for which the trademark is being registered.
Along with the specimen, an indication of when the trademark was initially put into use, or when you intend to begin using the trademark, must also be included.
3. Choosing a filing option
While paper filing is still an option, e-filing is both quicker and costs less. For these reasons we will be addressing e-filing as the standard filing option.
The USPTO’s e-filing system, Trademark Electronic Application System, has two methods for filing: TEAS, and TEAS Plus. The primary differences are a 50$ discount as compared to a TEAS filing as well as a heightened list of requirements for a TEAS Plus filing. The requirements, while not overly confusing, are nevertheless not trivial either; failure to comply will result in an additional $50 fee for every class in the application.
TEAS Plus requirements:
- be a ‘complete’ application (nearly all fields in the application are required),
- select an accurate description of the good or service trademark use directly from the ID Manual
- pay the fees for all classes at the time of filing,
- file certain later communications with the USPTO through TEAS, and,
- receive all communications concerning the application through email
The most unforgiving requirement, or at least the hardest to comply with, is (2), to select an accurate description of your trademark from those already found in the USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual). In this manual, you’ll find a list of all the descriptions the USPTO has currently published for classifying a registered trademark. If one does not exist, an email petition to include a new description in the ID Manual can be made to the USPTO (firstname.lastname@example.org).
If you are able to find a description in the ID Manual, and opt to go with a TEAS Plus filing, congratulations! Otherwise, guidance about how to phrase your description can be found by looking through the ID Manual to help glean possible appropriate language. Trademark lawyers use to say that drafting a description is more an art than a science. A good start is looking at entries in the same class as your trademark to see how similar trademark descriptions are written:
Here’s an example
Say you’re interested in starting a company consulting with commercial climbing gyms for the setup, design, and maintenance of their actual climbing facility.
- find an appropriate class for your good or service, say class 41, for sporting and cultural activities; http://www.uspto.gov/trademarks/notices/international.jsp
- search for that class in the ID Manual to see a listing of all trademark descriptions in that class; search for “041”[IC]; http://tess2.uspto.gov/netahtml/tidm.html
- compare your proposed description to similar trademark descriptions that show up in the search, not necessary climbing related;
- if nothing shows up, return to step (2) and search for terms related to your trademark, such as “climbing”; remember, the search will only return exact matches (a search for “climb” will not return anything, but a search for “climbing” will).
If you’re feeling lost, check Eric Adler’s step-by-step filing guide. Also, many law firms offer a fixed fee arrangement for filing a trademark application ($500 to $1,000) and sites like Trademarkia or LegalZoom lower the price in the $100-$200 range, not including the USPTO filing fee of $325 per class.