In today’s competitive market, a company’s brand is one of its most valuable assets. Whether you're a small business owner or a large corporation, protecting your intellectual property ("IP") through trademark registration (in addition to other practices) is crucial for safeguarding your brand identity and maintaining a competitive edge. A trademark is a symbol, word, phrase, or design that distinguishes a company’s goods or services from those of others in the marketplace. It’s a powerful tool that helps customers identify a company’s brand and can help build trust and loyalty, while also driving value.
Although filing a trademark application may seem simple, the process is more detailed and nuanced than many realize. Additionally, the US Patent and Trademark Office (USPTO) is notorious for both stringency and rejecting applications, and failure to properly plan for and file a trademark application can result in both significant delays and costs for an applicant. Although this article is meant to help provide an overview of the trademark application process, it is not a substitute for legal advice, and trademark applicants should strongly consider consulting with an attorney familiar with trademark matters.
Before you file a trademark application, it’s important to understand what a trademark is and what it protects. A trademark can be anything that uniquely identifies your business, product, or service, including:
Trademark protection helps prevent others from using similar marks that could confuse consumers. This legal protection is nationwide, and provides you with exclusive rights to use the mark in connection with the goods or services it represents.
Before submitting a trademark application, the first step is to conduct a thorough trademark search. This step is crucial because it ensures that your trademark is not already in use or too similar to an existing registered trademark. If your mark is too similar to an already registered trademark, your application will likely be rejected, or you could face legal challenges down the line. A trademark search is typically conducted through the U.S. Patent and Trademark Office’s (USPTO) search tool, TESS (Trademark Electronic Search System). However, because not all business use registered trademarks, it is also prudent to conduct general open-source searches on the internet as well. When using Tess, as noted above, its important not only to search for exact matches, but also to search for similar matches. Applicants should also pay attention to the status of any returned marks, as the results displayed may also include marks that are no active. While anyone can sign up to use TESS, the system can be complicated to navigate, and it is easy to overlook (or fail to properly search for) competing marks. In any event, a thorough and methodical search is key to avoid headaches later on.
After determining that a mark is available, the next step is to determine the correct class or classes under which your trademark falls and which you wish to protect. The Nice Classification is an international system that categorizes goods and services into forty-five (45) classes. Each class represents a different category of goods or services. For example:
Choosing the right class is critical because it dictates the scope of your trademark protection. If you’re offering multiple types of goods or services, you might need to file under multiple classes. If you fail to file for a class your product or service falls under, your trademark protection will not extend to that class of good or service. You should note however, that each individual class carries a separate filing fee, so applications meant to cover numerous categories of goods and services carry a heavy fee.
Once you’ve completed a trademark search and identified the appropriate class or classes, the next step is to prepare your application. To do so, you’ll need to gather.
After all information has been properly filled out or attached, the next step is to submit the trademark application to the USPTO through the Trademark Electronic Application System (TEAS). As noted before, the filing fees vary based on the number of classes and the type of application, but generally range from $250 to $350 per class chosen.
After submitting your trademark application, the trademark office will examine it to ensure that it meets filing requirements. In other words, the examiner will review your application to check for potential conflicts with existing marks and ensure it complies with trademark laws.
If the application passes the examination, the trademark will be published for opposition. During this time, third parties have an opportunity to oppose the registration of the trademark if they believe it conflicts with their own rights. If a third party files an opposition during the publication period, they will argue that your trademark should not be registered, and can lead to a legal proceeding to resolve the dispute. If no oppositions are filed, however, and your application is successfully examined, your trademark will be registered and you will receive a certificate of registration.
Alternatively, if the examiner finds issues with the application (e.g., the trademark is too similar to an existing trademark or the description of goods/services is unclear), you’ll receive an office action, in which case you’ll either need to address the concerns raised by the examiner and resubmit the application for reconsideration, or chose to abandon the application.
After receiving a certificate of registration, trademark owners must take steps to continue to protect their marks, including monitoring for, and responding to, infringement, and complying with applicable legal requirements such as:
