Learn How to Register Your Trademark

You’ve come up with a great name for your product or business, and you want to be sure no one else uses it. Do you need to get it trademarked? Is registering a trademark something you can do on your own?

Or maybe you’ve just come up with a snappy product name, and you’ve decided you want to trademark it. What should you do next? Is it really as easy as the U.S. Patent and Trademark Office website says it is? Can you really do it without a trademark lawyer?

We’ll be honest; trademarks can be a bit tricky. In general, it’s helpful to get assistance from a lawyer even though it’s legal and possible to do it on your own. Here, we’ll walk you through the basics of what a trademark is, the protection it does and doesn’t give you, the gist of the trademark registration process, and more.

What is a trademark, and why register?

A trademark is a word, phrase, symbol, or design that identifies and distinguishes the source of goods or services of one party from those of others. Registering a federal trademark for your business name or mark provides you with exclusive rights to use it nationwide in connection with the products and services it’s registered for. This not only discourages competitors from using your name or creating similar-sounding names to deceive customers but also enhances your brand’s credibility.

The ability to legally use the ® symbol next to your name is another significant advantage. Moreover, having a registered trademark allows you to file a lawsuit in federal court to enforce your trademark rights, providing robust legal protection for your brand.

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Who owns a trademark?

Under common law, the person or entity that owns a trademark is whoever uses it first in business, making it an identifiable part of their brand. The owner could be a sole proprietor, a partnership, a limited liability company, a corporation, or another business structure. But the first person to use it in commerce is, technically speaking, the mark’s owner.

After that definition, you might find yourself wondering if it’s even worth going to the United States Patent and Trademark Office (USPTO) to get a federal registration for your trademark.

Having a registration certificate from USPTO (or even your state office) doesn’t grant you ownership of the trademark because you already “owned” it to begin with. A trademark registration simply proves that you own it; if anyone infringes on your name, your registration will give you a resource to pursue legal action against them if needed.

How do I determine if I own a trademark?

Before you get into the registration process, you need to check that you have the right to use the name or mark in the first place. The easiest way to start is by running a trademark search on the USPTO website. An internet search is always essential, too. Run a similar check with the state trademark office (or offices if you operate in more than one state). You can also hire a special search company to check through telephone listings, company names, and so on; this is the most thorough option.

These searches won’t guarantee that your name doesn’t infringe on any registered marks, but it’s a crucial step for proper trademark use.

How to Register a Trademark

If you decide to go for a national mark and you want to try to apply on your own, you can go to the U.S. Patent and Trademark Office website at www.uspto.gov and go through the entire application online with the Trademark Electronic Application System (TEAS). After submission, the USPTO will review your trademark application. If the examining attorney raises no objections or if you successfully address any objections, your mark will be published in the “Official Gazette.”

This publication allows any party who believes they may be damaged by the registration to file an opposition or request an extension to oppose within 30 days. Essentially, the notice gives other companies the opportunity to object to a registration that infringes on their own.

If no one raises an objection within 30 days of that publication date and the USPTO determines that your mark is eligible for registration, your application will go through.

Trademark Classes and Fees

When registering a trademark, it’s important to understand the concept of trademark classes. If your name is used for more than one type of goods or services, you may need to register it in multiple classes. Each class represents a category of goods or services, and registering in multiple classes requires additional fees.

The USPTO charges a flat fee of $250.00 for a TEAS Plus application or $350.00 for a TEAS Standard initial application per class of goods or services. These filing fees are non-refundable, so it’s essential to ensure your application is accurate and follows all applicable rules to avoid unnecessary costs.

How long should I expect the application process to take?

The entire process for a federal registration is pretty lengthy, even if everything goes well after meeting the minimum filing requirements. For example, in some cases where your name is very distinctive and your case fits neatly into a valid trademark, you can easily send a specimen showing that the name is in use. In such a straightforward case, your registration may go through without a hitch, and you would receive a registration in approximately 12 to 18 months. Then, in most cases, you would be protected against anyone in the United States using your product or service name on a similar product.

Unfortunately, it’s not always the case that your application for trademark registration goes through quite this easily. Often, when the examining attorney reviews an application, they may ask for more information, such as a rewrite of your statement of use. They might ask for a different sample of your mark instead, or someone might object to your mark. These sorts of cases can take much longer.

Can I go without a federal registration for my trademark?

Federal trademark registration isn’t a legal requirement; you can very well get by without one. The trademark rights you have under common law are pretty good. If you were the first to use a mark, then you technically own it. You can sue someone for trademark infringement if they copy your name for a similar product. But without registration, the court battles can be trickier. You’d have to clearly prove that you were the first to use the mark. But if you registered, you’d have proof, giving you more robust trademark protection.

You might also be considering a state trademark, which is simpler, quicker, and less expensive to get. The protections of a state registration are pretty good, but they apply only within the confines of your state. What happens when you border another state? What if someone just over the way starts using your product name for a similar product? It’s rather difficult to limit your “territory” in the days of the Internet and easy transportation. Again, a national trademark would definitely make your life easier.

Please note that you can also register your mark internationally once your company grows to the extent that you are trading overseas. If you go the foreign registration route, it’s highly recommended to work with an experienced trademark attorney.

Do I need to hire an attorney to help me with my trademark registration?

Since a trademark application is pretty complicated, it’s generally recommended to work with an attorney. But it’s not legally required to hire an attorney if you’re domestic to the United States or its territories.

That said, foreign applicants are required to hire a licensed attorney. They’ll represent you at the USPTO.

Maintaining Your Trademark Registration

To keep your trademark registration active, you must file specific maintenance documents. Between the 5th and 6th year from the original date of registration, you need to file a “Section 8 maintenance filing” to confirm that the trademark is still in use. Then, between the 9th and 10th year after your registration, you must file a Section 9 renewal to extend the trademark’s validity for another 10 years. After that, you’ll need to file a renewal every 10 years.

Filing these renewals helps prove that you are still using the mark in commerce. Remember that usage is what gives you “ownership” of the mark in the first place, so it’s important to prove that you’re using it.

If you fail to file a statement of use or an extension request within six months from the date the notice of allowance was issued, your application will be considered abandoned. In such cases, you can file a petition to revive the application within two months of the abandonment date. Staying on top of these requirements helps ensure that your trademark remains protected and enforceable.

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Disclaimer: The content on this page is for information purposes only and does not constitute legal, tax, or accounting advice. If you have specific questions about any of these topics, seek the counsel of a licensed professional.