You’ve worked hard choosing a business name that encapsulates your brand’s essence, engages your target audience’s attention, and connects with their emotions to sell your products or services.
That’s why you must protect it, and you can by registering a trademark.
But the registration process isn’t easy, and if you get it wrong, the United States Patent and Trademark Office might deny your mark, which could cost you the application fee.
This post will tell you how to prepare your application and file it, why USPTO might deny it, what to do if that happens, and what `re the steps you must take after you get trademark approval.
A trademark is a symbol, word, phrase, or combination that identifies and distinguishes a brand’s products or services from another’s. It’s like a signature that protects your intellectual property and prevents unscrupulous types from stealing your ideas or using similar marks that could confuse consumers.
For example, you’ve got a memorable name, “Wok this way,” for your new Asian-inspired food truck business. It’s perfect, works on all your branding platforms, and people love it.
To own that name and stop anyone from using it, you must register a trademark with the United States Patent.
Trademarks, patents, and copyrights all fall under the Intellectual property umbrella, but they protect different things.
Here’s a quick explanation:
A trademark stops anyone else from using a symbol, word, or phrase (like your logo or business name) you used to promote your products or services.
Once you own a trademark and continuously use it, you can renew it indefinitely.
Patents protect inventions, giving holders the exclusive right to make, use, and sell them for a certain period.
Patent protection lasts for 20 years from the filing date.
Copyrights protect the arts, like books, movies, or songs.
It protects the expression rather than the concept itself, so while you can’t copy a work, you could create something similar in your style.
Copyright is a little ambiguous, as Pharrell Williams and Ed Sheeran found out!
Registration is automatic, but registering a copyright can provide additional legal protections.
Trademarks protect brand identities, patents protect inventions, and copyrights protect creative works.
Common law ownership refers to gaining ownership of a trademark through use in commerce.
For example, you come up with the business name “Sip Happens” for your new coffee shop and run it locally for several years. Even though you never trademark your business name, you have common law ownership, giving you legal rights in your area.
While common law ownership allows you to gain trademark rights through use, registration provides national legal protection for your business and brand identity.
Trademark classes are how the USPTO categorizes different products and services. There are 45 that cover everything from clothing to financial services.
When registering your trademark, you must choose the class relative to your product or service. And you must get this right because you could lose your protection from infringement if you choose the wrong class.
It sounds easy enough. But trademark classes are confusing, and it’s where many applications go wrong. So, take your time with this step and learn what you need before applying.
In a nutshell:
Trademark classes are categories of products and services used for trademark registration. Choosing the right classes is essential to protect your trademark in the areas where your brand does business.
Take our “Sip Happens” coffee shop example; if you aren’t planning on expanding to other states, you might not need a trademark.
But, chances are, most businesses do, especially if you answer yes to these questions:
The takeaway:
If you want to protect your branding, trademark your intellectual property.
There aren’t many things you can buy for $350 (the average registration fee) that provide the same value as a trademark.
Here are 10 ways a trademark can help your business:
Trademarking your business name can prevent others from using it or something similar, which can help you avoid legal action such as infringement lawsuits.
USPTO trademark registration protects your business name throughout the United States on a federal level. Stopping anyone else from using your business name or anything similar for the same products or services without your permission.
Trademarking your business name can help prevent counterfeit products from entering the market. And if someone sells fake products using your business name, you can sue them.
Think of a brand, any brand; what image came to mind?
For example, if I think of Nike, a swoosh appears; Micky Dee’s and its golden arches.
Sure, they’re global businesses, but brand recognition works on every level.
When you trademark your business name and secure the domain across all social media, you create consumer awareness, giving you the upper hand over your competitors.
Anything your business owns can increase its value; your intellectual property is part of that portfolio, especially if you want to sell.
A trademark can also attract investors by providing a valuable asset that differentiates your business from competitors, creating customer loyalty and leading to increased revenue and long-term growth.
Trademark registration allows you to use the ® symbol, warning others that using your trademark without your permission may cause legal action.
When registering a trademark, you must search for existing marks to avoid potential legal disputes or infringement claims. And to ensure your application gets approval, as fees are non-refundable!
Begin your search using the USPTO’s Electronic Search System (TESS).
It’s an online database that helps you search for trademarks already in use or pending registration. You can search for marks by keyword, trademark owner name, or trademark registration number.
And could also increase your search to include other countries, like:
Besides using TESS, you can also search at the Patent and Trademark Resource Center. And finish with a “common law search” to identify unregistered trademarks.
Here are some relevant steps and sources to see if similar marks are in use:
And the USPTO provides tons of helpful information on its TESS TIPS website page.
Applying for a trademark takes work; go slow and triple-check everything before submitting your application; and review the USPTO trademark basics page before you begin.
Here’s a quick run-through of what the application requires:
The USPTO also provides an online step-by-step guide to help you through the application process.
You’ve 3 options when submitting your trademark application with the USPTO:
The Trademark Electronic Application System (TEAS) has two filing options:
TEAS Plus is cheaper, but you must use a standard description from the Trademark ID manual. If you want to write a description, you must use the Standard TEAS application.
The filing cost for a trademark application varies depending on the TEAS option selected. TEAS Plus costs $250, and TEAS Standard costs $350, but additional fees may apply for multiple classes or marks.
When you submit your trademark application, a USPTO examining attorney reviews it. If any issues arise, you’ll receive an Office action letter explaining the problem and granting you around 6 months to respond. It’s essential to respond to Office actions within this time frame because failing to do so will cause the denial of your application.
Assuming your application meets all the requirements and receives approval, the USPTO will publish it in the Trademark Official Gazette, allowing others to oppose it. If someone does, you may need legal help to address the challenge.
After submitting, check your application status on the Trademark Status and Document Retrieval (TSDR) system every three to six months to ensure you meet all deadlines. And expect a response within three months, but applications can take longer.
The bad news is that the USPTO can reject your trademark application; here are the main reasons:
Additional help from the USPTO:
Although the USPTO website and staff can help you with the trademark application process, consider consulting a trademark lawyer if in doubt.
If a lawyer is outside your budget, don’t worry, the USPTO website has a ton of information. It’s easy to navigate and provides simple explanations of what to expect.
After you submit your application and receive approval, the USPTO will send you a certificate confirming your trademark protection.
But that’s not the end of the journey; now you have to protect and renew your trademark:
Protecting your trademark, also known as maintaining, means ensuring no other business uses it without your permission. If you don’t, you could lose it.
It comes back to the “common law use” we looked at earlier in the post.
Also, if your mark becomes too generic, meaning we use it to refer to a type of product or service rather than your specific brand (like Velcro and Thermos), you may lose protection. But if that happens, odds are you’ll have already made your fortune!
How to protect your trademark
Monitor your marketplace and look for any other brand using your business name; if you find one, take immediate legal action and send a cease-and-desist letter or sue for trademark infringement.
Key takeaway: You could lose your trademark if you don’t protect it.
Renewing your trademark every 10 years (or as required by your country) is crucial for protecting your brand identity. Failing to renew it can lead to cancellation or expiration, making your brand vulnerable to infringement.
To renew your trademark, file a renewal application with USPTO, provide basic information about your mark and confirm you’re still using it.
Renewing your trademark maintains its registration and legal protections. Keep track of your trademark renewal deadlines and file the paperwork on time to safeguard your brand identity.
A trademark is a symbol, word, phrase, design, or combination to promote your brand’s products or services and distinguish it from your competitors.
A trademark becomes official when you register it with the USPTO.
Your trademarks protect your brand’s visual identity by stopping others from using similar marks that could confuse consumers. And give you the legal basis to sue anyone that steals your designs.
It’s a good idea to trademark your business name the moment you register it to get your legal rights and prevent others from using similar marks.
No, there are fees associated with trademark registration, including application and maintenance fees.
Trademark registration costs range from $225 to $400 per class of goods or services.
No, you can do it. However, consider legal advice to ensure your application meets all requirements and addresses potential legal issues.
Your trademark is yours forever if you renew and continue using it.
If the USPTO refuses your trademark application, you can appeal the decision or change the application to address the issues raised by the examining attorney.
And if that fails, hire a trademark attorney.
Securing your trademark is an investment in your business’s long-term success and growth, and that’s always worth the effort.
Because when you trademark your business name, you own another piece of your visual identity.
And when you add that to your logo, you can create a successful brand that consumers recognize and trust.
This portion of our website is for informational purposes only. Tailor Brands is not a law firm, and none of the information on this website constitutes or is intended to convey legal advice. All statements, opinions, recommendations, and conclusions are solely the expression of the author and provided on an as-is basis. Accordingly, Tailor Brands is not responsible for the information and/or its accuracy or completeness.
Terry is a serial entrepreneur with over 25 years of experience building businesses across multiple industries – construction, real estate, e-commerce, hotelier, and now digital media. When not working, Terry likes to kick back and relax with family, explore Taoism’s mysteries, or savor the taste of fine Italian red wine.
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