Trademark registration is a vital step for business owners everywhere who are looking to protect their brand identity in the United States.
While the process of trademark registration may seem daunting, this guide will break it down into simple, actionable steps for non-legal professionals.
Step 1: Determine Trademark Eligibility
Before starting the trademark registration, it’s essential to understand which types of marks are eligible. Your mark should be distinctive, and easily distinguishable from common words or symbols to avoid marketplace confusion.
Levels of Trademark Strength
There are different levels of distinctiveness for trademarks, which refer to how strong the trademark is. Here’s how they are classified, with the most distinctive, and thus the best options, first:
Fanciful Marks: These are entirely made-up words, invented for the sole use of the business.
- Example: "Xerox" for copiers is a fanciful trademark, as the name was invented for the business and meant nothing beforehand.
Arbitrary Marks: These trademarks consist of words used in a way that has no connection to the products or services they represent, i.e. with an arbitrary connection between the word and the business.
- Example: "Apple" for computers is an arbitrary trademark, as there is no other relation between apples and computing.
Suggestive Marks: Suggestive marks indirectly describe a characteristic or quality of the goods or services they represent. These require some imagination to connect to the product, but often aren’t immediately apparent.
- Example: "Netflix" is a suggestive trademark, as it suggests movies (flicks) available online (the net).
Descriptive Marks: Descriptive marks directly describe a feature or quality of the goods or services. Initially, they are not inherently distinctive but can become eligible if they acquire secondary meaning (i.e., consumers associate the mark with a specific source).
- Example: "Holiday Inn" is a descriptive trademark. It initially described accommodations available during holidays, but it acquired secondary meaning over time.
Generic Marks: Generic terms, which describe the product or service itself, cannot be trademarked. These are prohibited as they consist of a word that’s already commonly used by competing businesses in the industry, and would do nothing to set this new business apart.
- Example: You cannot trademark the word "Computer" for computers.
Note: There is also a process known as “Genericide”, in which a business that once had a distinctive trademark name loses its rights to the mark when the mark becomes generic, meaning it’s now the commonly used word for the product itself. Read this article to learn more about Genericide.
- Examples: Aspirin, Dry Ice, and Sellotape were all once protected trademarks, but have lost their IP status due to genericide.
Step 2: Conduct a Trademark Search
Before applying, it's crucial to conduct a thorough search to confirm that your trademark is unique and hasn't already been registered by someone else.
You can do this through the United States Patent and Trademark Office (USPTO) database or hire a professional trademark search service for a comprehensive search.
Consider phonetic and spelling variations of your mark to avoid potential conflicts. Trademarks that sound similar or have similar spellings can be problematic for your application. For instance, if you’re looking to register your business name for trademark as “Exemplum”, you would be well advised to search for similar terms like “Xemplum” “Exemplar”, or “Ezemplum”.
Step 3: Identify the Correct Trademark Class
Once you’re certain there isn’t already a trademark that’s similar to your intended one, it’s now time to assign classes to your mark.
The United States follows the Nice Classification system, which groups goods and services into 45 distinct classes, which are then divided into subclasses.
Each class represents a specific category of products or services. For example, Class 25 covers clothing, Class 35 covers advertising and business services, Class 42 covers computer and technology services, and so on.
Step 4: Create and Document Your Trademark
Start by creating a high-quality representation of your trademark, making sure it's visually consistent. Given how important this step is, it's worth double-checking your submission multiple times to ensure its perfection, or considering professional help for the visual representation to enhance your trademark's recognizability.
In your documentation, explain how and where you plan to use the trademark with specific products or services and indicate its role in your business. This detailed documentation is essential for a successful trademark registration and robust brand protection.
Step 5: Prepare and Submit the Application
Submit your application through the USPTO’s (www.uspto.gov) Trademark Electronic Application System (TEAS), providing the following necessary details:
- Your personal or business information, including name and address.
- The specific mark you wish to register.
- Details of the goods or services associated with your mark.
- A specimen of the mark (e.g., logo, label, or packaging).
- The basis for filing, either "use in commerce" or "intent to use."
Step 6: Pay the Filing Fee
Registering a trademark in the US starts at $250. These filing fees can vary depending on factors like the filing method and the number of trademark classes you choose.
Review the current fee schedule on the USPTO website and submit the required payment with your application.
Step 7: Monitor Your Application
To safeguard your trademark rights, it's essential to stay proactive. Monitor your application’s status through the USPTO's online portal to prevent any hindrance in the registration process. Regular checks and prompt actions are necessary for a smooth registration.
Review your application or registration status every 3-4 months during the application process and every 6 months after registration, keeping records of dates and status pages.
Leverage the USPTO's user-friendly Trademark Search and Document Retrieval (TSDR) system to track your trademark's status. If you encounter problems, don't delay. Contact the Trademark Assistance Center (TAC) or your examining attorney for assistance.
Step 8: Completed Registration
Upon approval, your application is published for opposition for 30 days. If unopposed and all requirements are met, you will receive a Certificate of Registration, granting you exclusive rights to your trademark.
Registering your trademark is a significant achievement, but it won’t last forever without renewal. Trademark registrations in the United States are valid for ten years initially, after which they can be renewed indefinitely for successive ten-year periods.
It's vital to stay diligent in monitoring renewal deadlines to ensure continuous protection of your brand. Failure to renew your trademark registration can result in its cancellation and the loss of exclusive rights, so keep an eye on your IP.
MARQ Folio: Your Partner in American Trademark
When it comes to securing your trademarks internationally, the process can be a daunting maze.
That's where MARQ Folio comes in.
MARQ Folio simplifies your international trademark registration process, ensuring your brand’s identity is straightforward and stress-free as possible. With access to a network of expert law firms in each country, and a user-friendly online application and monitoring system, choosing MARQ Folio not only facilitates a smoother registration process but also empowers you with the tools and expertise needed to secure and manage your trademark effectively across the globe.