Registering a trademark with the United States Patent and Trademark Office (USPTO) requires that you to complete and submit a trademark application. This can be done online using the USPTO’s Trademark Electronic Application System or TEAS. You can also submit a paper application, but applicants overwhelmingly (95%) choose TEAS to apply.
You aren’t required to use an attorney to register your trademark, but the USPTO recommends that you do, and for good reason. A recent study found that using a trademark attorney significantly increased the likelihood of a successful trademark application; trademark applications prosecuted by attorneys succeeded 82% of the time, as opposed to only 60% of the time without an attorney.
Before you apply, you should perform a thorough search of your chosen trademark. Trademark searches help make sure that your trademark is available for use and is registerable with the USPTO. This includes determining whether anyone else came up with your name before you did and used it in the marketplace. It also includes identifying potential problems such as a likelihood of confusion with a prior registered trademark or with a trademark in a pending trademark application. Finally, a trademark search may show you whether your trademark, or part of your trademark, appears as generic or descriptive wording in another trademark registration, which may indicate that your chosen trademark is weak or difficult to protect.
Trademark searching can be very complex. A search for a trademark involves analyzing such things as sound and meaning, the inherent distinctiveness (or lack of distinctiveness) of a prior trademark, as well as other factors courts use in determining whether a proposed trademark infringes a pre-existing trademark. That’s why having an attorney who has expertise in trademark law, as well as access to robust trademark research tools, can help to more accurately determine the distinctiveness and registerability of your chosen product or service name. This can save you time and money in avoiding submission of a wasted trademark application.
After performing a trademark search to determine whether your proposed trademark is available and protectable, you need to make a number of important legal decisions in completing your trademark application, even if you’re not using a trademark attorney. These include accurately identifying and classifying your goods and services in your application, determining the “basis” under which your application will be filed, and submitting a specimen of your proposed trademark that shows that it’s being used properly with your products or services in each class of goods or services identified in your filing.
Identifying Your Goods and Services
The USPTO’s Trademark Manual of Acceptable Identification of Goods and Services will help you determine which classes your goods or services fall under. Goods are the tangible items you sell, while services are the tasks you perform for others.
If you make a mistake in identifying your goods or services in your application, you can’t change or add goods or services later. Working with a trademark attorney can help you properly identify the class of goods and services for your trademark application the first time and avoid multiple filings.
In your application, you will need to indicate the “basis” under which you are applying for trademark registration. You have four possible choices, although a single trademark application can include more than one filing basis if circumstances warrant. Each of these bases are discussed below. Section numbers refer to the applicable sections of the Lanham Act, the federal statute governing trademarks, service marks and unfair competition.
- Section 1(a). This section is for trademarks that are already being used in commerce. “In commerce” means that the goods or services you want trademarked are actually being sold or offered for sale to real customers (i.e. not just your friends and family), across state lines or internationally, in connection with your trademark.
- Section 1(b). This filing basis is used where you have an “intent to use” the trademark in commerce in the United States in the next 3 or 4 years. This is called an “Intent to Use” application or “ITU”. Once you start using your trademark, you will need to submit another filing with the USPTO proving that you are using your trademark in commerce in connection with all of the goods and services listed in your ITU, and include a specimen of your trademark (see below). If you’re not actually selling all of the goods or services in your ITU, your trademark registration could be cancelled for abandonment or non-use.
- Section 44(d). Trademark applicants in other countries can use this filing basis to file an application for the same trademark in the U.S., as long as the U.S. application isn’t filed later than 6 months after the foreign application was filed. This also gives the foreign application the benefit of the filing date of the earlier application in the other country for purposes of filing priority. The same thing applies to U.S. trademark applicants filing an application for the same trademark in a foreign country. The benefit of the earlier priority date for filing is that you can block someone else’s application for the same or similar trademark even if you filed your trademark application after they did.
- Section 44(e). This section is used where a trademark applicant already owns a trademark registration in another country which is a signatory to an international treaty such as the Madrid Protocol. If you proceed under Section 44(e), you don’t need to actually use your foreign trademark in the U.S. before it’s eligible for registration in the U.S. You only need a “bona fide intent” to use that trademark in the U.S. “Bona fide intent” means that you have objective proof that you intend to actually use the trademark in commerce (as opposed to merely reserving a right in the trademark). This doesn’t have to be proven before registration, however. Also, to use Section 44(e), you’ll need to provide a copy of your registration from the other country (translated, if necessary).
Ownership of Your Trademark
If your business is a legal entity such as a corporation or an LLC, the owner of your trademark will be your business. You should confirm that your legal entity is active and in good standing in the state of its formation before using the legal entity as an applicant. Individuals can also own trademarks.
There are two possible formats for most trademark registration applications:
- Standard character format. This format should be used to register words, letters, numbers, or any combination of words, letters and/or numbers, without including any particular font style, size, color, or design element. All letters and numbers must be depicted in Latin characters (e.g., the alphabet used by the U.S. and Western Europe). The proposed trademark can only include common punctuation or diacritical marks (marks added to a letter to indicate a special pronunciation). No stylized letters or numbers can be used.
- Stylized or design format. This format is appropriate for registering trademarks with a design element, words and/or letters with a particular stylized appearance. This could include a logo, a symbol, or words in a certain font, color, or typeface (e.g. Apple’s apple symbol; Coca-Cola’s script lettering on its soda bottles and cans).
It is usually preferable to use a standard character mark for your trademark application because it protects the wording of your trademark without limiting it to a specific font, style, size, or color. This provides broader protection for your trademark than a “logo” mark (or special form drawing).
You must submit a specimen of your trademark with your application. For standard character trademarks, this means a drawing consisting of typed letters, numbers, and punctuation. For stylized or design trademarks, this means a jpeg file of an image showing the trademark you want to register.
Specimens must demonstrate that your trademark is being properly used with your product or service in each of the classes of goods and services in your filing. A screenshot of your website where your products or services can be purchased may be sufficient as long as your trademark is prominently displayed. So is an image of your product with the trademark clearly visible on the product, packaging or an attached label.
Be sure not to display the circle “R” in any of your specimens since your trademark hasn’t been officially registered. Until it is, use the “TM” symbol.
Contact Becker Law LLC for Assistance
Becker Law LLC provides legal services in three main areas of intellectual property law: trademarks, copyrights, and trade secrets. We can assist you in researching trademark options, registering a trademark, and enforcing trademark rights. Contact us today to learn more.