As an attorney who supports small businesses for a living (and a small business owner myself!), I know that intellectual property is one of the most essential and personal components of your business. You’ve worked hard to turn your ideas into a real, thriving business, and your intellectual property is the representation of everything you’ve accomplished.
While the process for obtaining trademark protection can be challenging to understand, it’s essential that you register your intellectual property to keep it safe. This blog will explain the federal trademark registration process and how trademark law can protect your non-profit or for-profit business’ brand identity.
What Is a Trademark?
A trademark is a design, word, phrase, or symbol that is used to differentiate your products or services from other companies and competitors. Another similar term is a service mark, which specifically refers to companies offering services, not goods. Otherwise, trademark, service mark, and mark can be used interchangeably.
The United States Patent and Trademark Office (USPTO) regulates trademarks, service marks, and patents. Generally, trademarks are used to protect brand names, slogans, or logos. For example, the Nike “swoosh,” the brand name “Nike,” and the slogan “Just Do It.” are all trademarks (and incredibly valuable ones!). The “swoosh” is a design mark, and the brand name and slogan are word marks.
Trademarks are often confused with copyrights, which protect creative works of art or literature, and patents, which protect inventions. If you invented a new type of microchip, you could seek a patent on the invention itself, a trademark for the brand name you attach to the chip, and copyright for marketing materials such as Youtube ads. While the USPTO handles patent and trademark requests, the U.S. Copyright Office handles issues involving copyright.
What Legal Protection Does a Trademark Offer?
United States law offers trademark rights for the use of any original mark “in commerce” (which is legal-speak to mean that you use your mark on a good or with a service that is “sold across state lines”), whether or not the mark is registered. However, registering your business’ trade or service mark with the USPTO offers many benefits for your company, including:
- A presumption that you are the trademark owner and have the exclusive rights to use it nationwide to the exclusion of everyone else.
- Adding your mark to searchable databases so that others are aware of your rights.
- The right to use the commonly known “®” registration symbol so everyone knows it’s registered.
- The ability to rely on U.S. federal registration when applying for foreign trademark protection.
- The right to initiate litigation to protect your trademark rights.
The “®” symbol mentioned above specifically refers to those marks that have been officially registered with the USPTO. If you are in the process of obtaining a registered trademark, you can add terms like “TM” or “SM” to your company’s offerings. It is considered fraudulent to use the “®” symbol if your mark is not registered with the USPTO.
How Can Your Business Register a Trademark?
If you need to register a trademark, the USPTO has a well-defined approach for mark registration you’ll need to follow. Since it can seem overwhelming, let’s walk through the trademark application process step-by-step.
Hire a Trademark Attorney
If your company is based outside the United States, the USPTO requires that a licensed lawyer represent you in all trademark matters. Even if your business is based in the U.S., seeking legal advice and hiring an experienced lawyer to assist you with the trademark process offers numerous benefits.
When you apply to register a federal trademark, you are starting a legal proceeding. Like all other legal proceedings, the federal trademark registration process can be rigorous and time-consuming, and the smallest mistake can force you to start over from square one. When you have a seasoned lawyer on your side, they will draw from their years of experience filing trademarks to help the process run smoothly and identify potential headaches before registering.
Determine Your Mark
In consultation with your attorney, you’ll need to decide what intellectual property you want to trademark. Your mark must be unique and used in interstate commerce. The USPTO determines whether a mark can be registered as unique through three separate tests:
- How likely it is that the mark will be confused with existing trademarks.
- How similar your mark is to others already used in commerce.
- Whether the existing trade or service marks are in related business areas to others.
The goal is to prevent your trademark from infringing on the ownership rights of a similar mark, which could potentially allow your company to capitalize on the consumer recognition earned by an established brand. For example, if you wanted to trademark your microchip’s brand name as “McDonald’s Microchips,” the USPTO will review whether this name will confuse potential users. While McDonald’s is obviously a very well-known brand name, you will most likely not be rejected because of Ronald’s hamburger empire. Buyers of your computer chips will probably not confuse your computer chips with Ronald’s hamburgers when they see your name used in conjunction with your computer chips. Unless there is already another company in the microchip sphere using some version of the brand “McDonald’s,” your mark should be registrable. Conversely, if you were trying to sell hamburgers, your mark would likely be refused.
Prepare Your USPTO Application
You will need to create an account for using the USPTO’s Trademark Electronic Application System (“TEAS”). As of 2020, trademark registration requests must generally be filed online using TEAS. The basic facts that your application form must cover include:
- Owner name and business type.
- Owner’s contact information, including domicile.
- Your attorney’s name, licensure, and contact information.
- Your filing basis, such as an intent to use the mark in interstate commerce.
- A depiction of the mark you are seeking to protect.
- A real-life sample of your use of the mark in commerce, known as a “specimen”.
Once the application is complete, someone at your company with signing authority and firsthand knowledge of the application will attach a signature. The USPTO will collect a government filing fee of $250 or $350 per mark, depending on the type of application you file, and, after a time, will begin reviewing your request.
Communicate With the USPTO Examining Attorney
The USPTO will assign an examining attorney to review your application. The examining attorney’s job is to determine whether the application meets all applicable trademark rules and laws. As with most things that involve the government, this review period can last for months or longer.
In some cases, your application may need minor changes or updates to comply with the law. The examining attorney will contact you or your lawyer and request further action. You or your lawyer will need to respond to any communication from the examining attorney within a particular time or your application will lapse.
The examining attorney can also refuse your application at this point through an Office Action. If you receive an Office Action you must decide if you want to respond and make a case for publication, or abandon your application. Responding to Office Actions is costly and takes a lot of time. Your odds of receiving an Office Action are likely reduced if you hire an attorney to conduct a knockout search of your mark before applying. Through that search your attorney should be able to identify any potential issues with filing. That said, review of a mark is fairly subjective, so your attorney cannot guarantee that the examining attorney will have no objections to your application.
Receive Approval of Your Application
Finally, after determining your trademark meets the requirements for federal registration, the examining attorney will publish the mark in an “Official Gazette.” All interested parties will have 30 days after publication in the Official Gazette to object to approval of your mark. If there are no objections and your use of the mark in commerce is confirmed, you’ll receive an official certificate of registration a few months later. Congratulations!
Maintaining Your Registered Trademark
If your business intends to continue using the mark, you must file proper paperwork after five years and then before ten years expire. Additionally, a registered trademark must be renewed with the USPTO every ten years.
If you’re contemplating protecting your small business’ intellectual property, Mod Law Firm can assist you at every step of the trademark process. From advice on whether a mark is right for you, to running an existing trademark search, to lending our expertise in the application process, we can set your mind at ease.
To learn more about registering a trademark (or any of the other small-business friendly services that Mod Law offers!), we welcome you to schedule an introductory virtual consultation to discuss your business and your needs.