Understanding Trademarks
A trademark is a symbol, word, or words legally registered or established by use as representing a company or product. It helps distinguish your brand from others in the marketplace and protects brands, logos, and other distinctive business identifiers from being used by competitors.
Why Trademark a Name?
- Brand Protection: Prevents others from using a similar name that could confuse consumers
- Legal Rights: Provides legal protection and the ability to sue for infringement
- Brand Recognition: Enhances brand identity and consumer trust
Common Law vs. Federal Registration
While you gain some common law trademark rights simply by using a name in commerce, federal registration provides significant advantages:
- Nationwide protection
- Legal presumption of ownership
- Right to use the ® symbol
- Ability to file with U.S. Customs to prevent imports that infringe on your mark
Step-by-Step Guide to Trademarking a Name
Step 1: Conduct a Trademark Search
Before applying for a trademark, ensure that the name is not already in use. You can perform a search using the USPTO's Trademark Electronic Search System (TESS).
Tips for a Successful Search
- Use variations of the name
- Check for similar-sounding names
- Look for names with similar meanings
Step 2: Determine Your Filing Basis
The USPTO requires you to specify a filing basis for your application. The two most common options are:
- Use in Commerce: If you're already using the mark
- Intent to Use: If you plan to use the mark in the future
Step 3: Prepare Your Application
Gather the following information:
- Owner name and address
- Email address
- Mark description
- Goods/services description
- Filing fee payment
- Specimen showing use in commerce (if applicable)
- Drawing of the mark
Step 4: File the Trademark Application
File your application through the USPTO's Trademark Electronic Application System (TEAS).
Application Fees
| Application Type | Filing Fee |
|---|---|
| TEAS Plus | $250 per class |
| TEAS Standard | $350 per class |
Step 5: Monitor Your Application
After submission, the application goes through several stages:
- Initial review (approximately 3 months)
- Assignment to examining attorney
- Publication for opposition
- Registration (if no opposition filed)
Note: The entire process typically takes 12-18 months if no issues arise.
Step 6: Maintain Your Registration
Once registered, protect your trademark by:
- Using the ® symbol
- Monitoring for potential infringement
- Filing maintenance documents
- Renewing your registration every 10 years
Important Maintenance Deadlines
| Document | Due Date |
|---|---|
| Declaration of Use | Between 5th and 6th year |
| Renewal Application | Between 9th and 10th year |
| Subsequent Renewals | Every 10 years |
Common Pitfalls to Avoid
- Not conducting a comprehensive search
- Filing in the wrong class of goods/services
- Missing maintenance deadlines
- Not monitoring for infringement
- Using the ® symbol before registration
Enforcement
Once your trademark is registered, actively protect it by:
- Monitoring the marketplace
- Sending cease and desist letters when necessary
- Filing oppositions against similar trademark applications
- Taking legal action against infringers
For international protection, consider filing under the Madrid Protocol, which allows you to file trademark applications in multiple countries through a single application.
Remember that while you can file a trademark application yourself, working with an experienced trademark attorney can help avoid costly mistakes and increase your chances of successful registration.