How to Get a Trademark

If you are using a word, symbol, phrase, or design to identify your product or service and distinguish it from other companies’ products or services, then you may already have a trademark. ^[1] However, just having a trademark provides you little to no protection against infringement. If you want to enforce your trademark against infringers (other businesses that may be using your trademark without your permission, or that are using a mark that is so similar that it may confuse your customers) you will need to register your trademark with the appropriate governmental agency. ^[2]

EditSteps

EditEvaluating Whether You Need a Trademark

1. Know what a trademark is and isn’t. A trademark is a form of intellectual property such as a word, phrase, symbol, or design used to identify and distinguish your goods or services from those of others. ^[3]
   
   • A service mark identifies and distinguishes the source of a service.
   • A trademark protects brand names and logos.
2. Identify the geographic scope of protection you need. Do you only sell your product or service within the state of Illinois, with no plans to expand sales to other areas? Then you will likely only need to register your trademark with the state of Illinois. On the other hand, if you plan to sell your product or service nationwide, and maybe even internationally, consider registering your trademark with the federal government and applicable foreign countries.
   
3. Register your mark with the federal government. The federal government runs a centralized trademark registration department through the United States Patent and Trademark Office (PTO). ^[4] You are not required to register your trademark with the PTO, but this type of registration provides certain advantages. ^[5]
   
   • Gives legal presumption of ownership in an infringement lawsuit (you must prove you own the trademark if you want to claim injury from someone using it without your permission).
   • Provides public notice of your rights.
   • You can record your mark with the US Customs and Border Protection Service to prevent importation of infringing foreign good.
   • Allows you to use the ® symbol on your goods or services.
   • Allows you to bring an infringement action in federal court.
   • Allows you to apply for trademark protection in foreign countries.
4. Register your mark with your state. This provides protection within your state’s borders and you may bring an infringement action in state court. It also enables you to use the symbol ™ for goods and SM for services (though not the federal ® symbol). ^[6]
   
5. Consider using your mark without registering it. If your mark is strong and has never been used by others, it will be considered a trademark by virtue of your using it in commerce for several years. You may write TM after the word, phrase or design without getting it registered. However, if you don't register your trademark with the USPTO, it won't come with certain rights, including: ^[7]
   
   • The right to use the registered trademark logo (®).
   • The ability to bring about legal action in federal court.
   • The right to list your trademark in the PTO database, making it searchable by others.

EditSelecting a Mark – Avoiding Likelihood of Confusion

1. Search for existing marks to assess the likelihood of confusion with yours. ^[8] Conduct a search on the PTO website to compare your mark to other registered marks or pending applications using the Trademark Electronic Search System (TESS). Also perform keyword searches on the internet and in your state’s trademark database for similar marks and related goods and services to ensure your mark will not be confused with other marks that are not federally registered. ^[9] The PTO will not register your mark if it finds that two or more marks are so similar and the goods or services they cover so related that consumers would mistakenly believe they come from the same source.
   
2. Determine whether any existing marks are similar to yours. If marks sound alike (Apple and Appel), look alike (a blue apple and a blue peach), have the same meaning, even when translated (Apple and Pomme (French word for apple)), or create the same general impression with the public (Apple and Red Fruit), then the marks are similar and the PTO will consider whether the goods and services are also related.
   
3. Assess whether the similar marks cover related goods or services. If two marks are similar and the covered goods or services of each are related enough that consumers would assume they came from the same source, then the PTO will likely deny your registration based on likelihood of confusion. For example, if you attempt to register a trademark for ‘Pomme’ to cover computers and other technical devices, the PTO will likely reject that application in light of Apple’s existing trademarks. However, if you seek to register ‘Pomme’ to cover a line of dishtowels, the PTO will probably not decide that the public would be confused in light of Apple’s trademarks.
   

EditSelecting a Mark – Choosing the Strongest Mark Possible

1. Choose a strong mark. The stronger the mark, the easier it is to prevent its unauthorized use by third parties. Each mark falls into one or more of the following categories, listed here in order from strongest to weakest. Try for the strongest mark you can. ^[10]
   
   • Fanciful. An invented word with no known meaning, such as registering the word ‘Vingra’ for a clothing product.
   • Arbitrary. An actual word with a known meaning, but that is unrelated to the covered goods and services. The mark ‘Apple’ for computer products falls into this category.
   • Suggestive. A mark that suggests qualities or connections to the goods or services without overtly describing them, such as ‘Day-by-Day’ for a calendar.
   • Descriptive. A word or design that overtly describes the goods or services, such as using a picture of an oatmeal cookie for a cookie company. Descriptive marks are not generally registrable unless they acquire distinctiveness through extensive use in commerce for five or more years.
   • Generic. A generic mark, such as ‘Cars’ for a line of cars, is never registrable or enforceable against third parties.
2. Make sure your mark meets other qualifications for registration. The PTO may also reject your application if your mark falls into one of the following categories. ^[11]
   
   • A surname or a person's full name or likeness.
   • Offensive.
   • Geographically descriptive of the origin of the goods or services.
   • A translation of a foreign word that's generic or descriptive.
   • Already a book or movie title.
3. Analyze business reasons for your particular trademark. Regardless of whether your trademark is registrable and enforceable, it will not be worth much to you if the public can’t remember it, pronounce it, spell it, or if it translates to something offensive or disparaging in another language (for example, in Spanish, the brand name ‘Chevy Nova’ translates to ‘Chevy that doesn’t go’).
   
4. Hire a trademark attorney. A trademark attorney can help you pick a successful mark by performing the correct searches, navigate the complicated application process, offer advice on enforcement, and ensure you meet all maintenance deadlines. If you decide to hire an attorney, be sure to find someone with plenty of experience working with the PTO.
   

EditFiling Your Trademark Application With the PTO

1. File the PTO application online. The easiest way to file an application is to use the Trademark Electronic Application System (TEAS) on the PTO’s website. You will be required to submit the following: ^[12]
   
   • Identity of trademark owner. This may be a business entity or an individual. The owner need not be a US citizen.
   • Applicant name and address. All correspondence to and from the PTO will go through this person, so make sure he or she is reliable.
   • Depiction of the mark. This is a drawing of your mark, categorized as either a "standard character" drawing (one that contains only an image, no letters or words) or a "special form" drawing (a stylized version of a word, which may include a design, logo, special lettering, or colors).
   • Classes of goods and services related to the mark. This identifies the goods or services that you will be offering customers that will be associated with the mark you have chosen.
   • Basis for filing. You must assert that you are either (1) currently using the mark in your business, and the mark appears on the goods (“use-in-commerce”); or (2) intending to use the mark in your business in the future (“intent-to-use”).
   • Specimen. If your basis is “use-in-commerce”, you must submit an image of your good or service that shows the mark in use (such as a t-shirt with a tag attached that bears the mark).
   • Signature.
2. Pay the application fees. Currently, the TEAS application fee is $325 per class of goods or services.
   
   • You may instead opt to file a TEAS Plus application for $275, in which case you must agree to send and receive all correspondence with the PTO electronically and choose from a pre-populated list of goods and services. ^[13]
   • All PTO application fees are non-refundable, even if your application is ultimately rejected.
3. Monitor the status of your application. Check your application status every three to four months. Enter your serial number (which will be given to you when you apply) into the Trademark Status and Document Retrieval (TSDR) system to check your application status. ^[14]
   
   • The PTO examiner will review your application about three months after you submit it.
   • If the PTO examiner sends you a document known as an Office Action, that means there are problems with your application (based on likelihood of confusion with an existing mark, strength of your mark, etc.). You have six months to respond to the Office Action, or your application will be deemed abandoned. ^[15]
   • If the examiner approves your application, your mark will be published in the PTO’s Official Gazette, which is published online every week.
4. Wait 30 days. After publication in the Official Gazette, the public has 30 days to object to your mark’s registration by filing an opposition action in the Trademark Trial and Appeal Board (TTAB). ^[16] If this occurs, consult with an attorney on next steps.
   
5. Receive your registration certificate. The timing of this depends on your basis for filing and whether anyone objected to your trademark while it was published.
   
   • If no one objects, or if you win in an opposition action, you should receive your registration certificate 11 weeks after publication for a “use-in-commerce” mark or a mark based on a foreign registration.
   • If no one objects, or if you win in an opposition action on an “intent-to-use” mark, you will receive a Notice of Allowance eight weeks after publication. Then, you have six months to submit a Statement of Use to the PTO, or ask for a six-month extension to do so. After the PTO approves your Statement of Use, you will receive your registration certificate. ^[17]
6. Maintain your trademark with the PTO. To keep your trademark registration valid, note the following deadlines. ^[18]
   
   • You must file a maintenance document called a Declaration of Use (or Excusable non use) with the PTO between the fifth and sixth year of your registration or your mark will be cancelled. ^[19]
   • You must file a renewal application before the tenth year of your registration ends, or your registration will be cancelled. ^[20]

EditFiling Your Trademark Application With a State or Internationally

1. Register your trademark in your state. If you decide you do not need a nationwide registration, you can register your trademark in your state. State registration provides you with enforcement rights only within that state. Click on your state on the following webpage and learn the state-specific requirements and processes for registration. ^[21]
   
   • The state registration process may be faster and less expensive than registering with the PTO.
   • State registration does not entitle you to use the federal registration mark, ®, on your goods or services. ^[22]
2. Register your trademark internationally. At least 95 member countries have adopted the Madrid System for international trademark registrations, including the United States. ^[23] The Madrid System is a centralized application process that allows you to file a single application, in one language, with one set of fees, to protect your trademark in the countries you choose.
   
   • You will submit your international application through the PTO, which will send it along to the World Intellectual Property Organization (WIPO). WIPO will formally examine your application, record it in the International Register, then forward it to your requested territories for approval (usually within 12 or 18 months).
   • Your registration in each country will be good for ten years, at which point you can renew for additional ten year periods.
   • While many countries follow the Madrid System, there are some notable exceptions. For example, as of 2015, Canada is not a member country. If you seek to register your trademark in Canada, you will need to go through Canada’s trademark office. ^[24]

EditTips

• You can also file the PTO application by mail. You may also request a trademark application from the PTO be sent to you by mail, and you may mail it back. The fee for a mail-in application is currently $375. Note that the PTO does not accept trademark applications sent by fax. ^[25]
• Note that even fanciful or arbitrary marks may become generic over time if the owner fails to police their use (such as ‘Aspirin,’ which is now widely used as a catch-all term for painkillers, regardless of the brand).
• Monitor your mark’s use. If at any stage your mark is found to have weakened or is being used by others without your permission, a third party can file an opposition with TTAB and you may lose your mark.
• If you fail to enforce your trademark, you may eventually lose it. If enough people begin using your mark without your permission, to the point where it becomes impossible to enforce the trademark, your mark may be cancelled.
• Note that an internet domain name is not a trademark, and registering your domain name does not provide trademark rights. Occasionally, prominent use of a web address in public (such as ‘match.com’) may qualify as actual use for purposes of applying for trademark registration, but remember that the domain name, in and of itself, does not automatically constitute a trademark.

EditSources and Citations

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