How do I register a trademark?
There are some initial steps to take before starting the trademark registration process. Once those steps are completed, you can start the formal application.
1. Decide whether your mark meets the trademark requirements.
You must first determine whether your mark meets the qualifications to be a registered trademark. In general, the definition of a trademark is relatively broad. It can be any word, phrase, symbol, design, or device that designates the source of a product or service.
Trademark protection can also apply to a sound, a scent, or other completely non-visual matter, as long as it distinguishes the source of a particular product or service. Whatever mark you attempt to register, it should be unique to your business and distinguish your services or products from others. Keep in mind that generic names (for example, BIKE to sell bicycles, or SODA for carbonated drinks) are not eligible for trademark protection. You might consider avoiding overly descriptive trademark names, which simply describe a quality, feature, purpose, or function of your product. For example, "CREAMY" for yogurt, or "SPEEDY" for racing bikes are descriptive terms that may not be eligible.
2. Do an initial trademark search.
When you submit a trademark application to the USPTO, one of the first things the USPTO Examining Attorney will do is check that your mark is not identical or highly similar to someone else's trademark in sight, sound, connotation, and overall commercial appearance. That is why the registration application process should not start until a search of the USPTO's trademark registry has been completed. You can use the Trademark Electronic Search System (TESS) for this initial step.
TESS provides several different options for conducting a trademark search:
"Basic Word Mark" allows you to search for direct matches with all or part of your proposed mark.
"Word and/or Design Mark Search (Structured)" allows searching various fields such as the name of the mark, the types of goods or services, or the international classification of the product category. This option allows you to connect two search queries together with various operators, such as a keyword in the trademark name or a keyword in the class description.
"Word and/or Design Mark Search (Free Form)" allows a free form search string with any combination of fields that the USPTO captures. This option requires knowledge of USPTO field codes, and how to use operators to put together search queries. Thankfully, the USPTO provides a guide directly within this search option to explain each field and how to use it in a search.
In order to be sure that you are not infringing another trademark owner's common law rights, you should also consider searching state business registries, domain name databases, social media handles, and even a general internet search to see if any products or services already use your proposed name. The owners of these marks may have superior rights if they used their trademark in commerce first, and oppose your application, or even cancel your registration after it is issued by the USPTO.
3. Create a USPTO.gov account.
You must create an account with an email and password through the USPTO in order to file a trademark application through the USPTO's Trademark Electronic Application System (TEAS). Once you are registered, you can access the application materials you need to get the application process started.
4. Complete your application.
One of the initial decisions is to complete the application using TEAS Plus or TEAS Standard. TEAS Plus has a lower filing fee per class but you must pay all application filing fees with your initial application, and must use a USPTO-approved description for your goods or services. For foreign applicants, TEAS Plus also requires that a U.S.-licensed attorney complete and submit your initial application.
With TEAS Standard, the filing fee per class is higher and you pay one application filing fee with your initial application and the rest later in the process. TEAS Standard allows you to write the description of your goods and services, but the description must accurately describe your goods and services.
The application will then ask for basic information about the owner of the mark. If a business will own the mark, you will have to provide the entity type (corporation, LLC, partnership, etc.) as well as the state or country of incorporation.
You will then select the basis of the application, meaning whether you are currently using the mark in commerce or intend to use it in the future. Next, you will have to write the mark exactly as it appears on your products or services, or upload a logo if you are filing for a design mark.
If your mark is currently in use, you will have to select a classification category and describe your goods or services. If you selected TEAS Plus, you must select a USPTO-approved class description for your product or service.
A specimen is required for each class — which can be a screenshot of your products or services showing the mark as a consumer would see it. Finally, for marks in use, you will need to provide a date that the mark was first used, both in the U.S. and internationally.
5. File and pay the application fee.
You must pay the filing fee as part of the application process, or your application will not be considered. Filing fees are charged based on the number of classes of goods or services in your application. The USPTO maintains a schedule of fees.
You can file your application directly through TEAS. You will then receive an email confirmation with a serial number at the email address provided in the application. The serial number will be how you can look up the status of your application.
6. Respond to questions from the USPTO.
Once your application is submitted, a USPTO Examining Attorney will be assigned to your application. The Examining Attorney will review your application and decide whether you meet the requirements for registration. They may reach out to you to get more information or ask questions. Based on current processing times, the initial review can take anywhere from five to seven months from the date of submission.
If the Examining Attorney identifies any problems with your application, they will issue an initial refusal called an Office Action. The Office Action will identify any issues with your application and provide you with the opportunity to respond. Office Actions usually require a response within six months.
Some of the most common reasons for Office Actions are likelihood of confusion between your mark and another similar mark that was filed or registered before your application, revision of the description of your goods or services, recategorization of the ID class, or requiring a new specimen showing your mark in use for your goods or services.
7. Your mark is published with the USPTO.
After you have resolved any issues identified in an Office Action (or you did not receive an Office Action), the USPTO will publish the mark for opposition in its Trademark Official Gazette (TMOG) for 30 days. During this period, anyone who believes their business will be harmed by your trademark registration may file an objection or opposition.
If no opposition is filed to your application, three months after your trademark is published in the TMOG, the USPTO will issue a registration.
8. Intent to Use Applications — Notice of Allowance and Statement of Use.
Applications based on Intent to Use (ITU) follow a similar process as above with a few minor differences. After the publication period, the USPTO will issue a Notice of Allowance (NOA). The NOA states that your mark will be approved for registration once you submit a specimen showing the mark in use for the goods or services in your application. This is called the Statement of Use (SOU). If you are not using the mark when you get the SOU, you can ask for a six month extension to show use. You can file a total of five extension requests. There is also a fee associated with filing an SOU, depending on the number of classes in the application. Once you file an acceptable SOU, the USPTO will issue a registration certificate, generally within 2-3 months.
9. Get your Certificate of Registration.
Once your trademark is registered, you may want to allow others to use it for a royalty fee. The best way to set up that type of arrangement is to make a Trademark License Agreement.
Do I need to register a trademark?
No. You have the legal right to use your mark the moment that it is created (referred to as common law rights). However, a trademark registration with the USPTO provides additional legal rights, such as:
- Official federal notice of ownership.
- Public notice to others, including competitors, of your ownership.
- National protection.
- Ability to apply for trademark protection in foreign countries based on your U.S. registration.
- Presumption of ownership in trademark infringement cases.
- Use of the federal trademark registration symbol, ®.
- Right to stop counterfeiters from importing similar knock-off products.
How much does it cost to register a trademark?
Trademark registration fees vary based on the filing basis that you have selected. It will also vary based on the number of classes in your application. Classes are different categories of goods or services, such as software or t-shirts. You are charged an application fee for each class, so if your trademark falls under two classes, for example, you may need to double the fee.
The starting rate for trademark registration is either $250 or $350, depending on the type of trademark you are registering.
How long will it take to register a trademark?
In general, you can expect the trademark registration process to take between 12 to 18 months, if the trademark is already used in commerce. The length of time to process your application will often depend on the individual Examining Attorney reviewing your application and the overall volume of trademarks submitted to the USPTO.
Get Help with the Trademark Registration Process
The Trademark Registration process can be complicated and filled with decisions that raise legal questions. If you have questions or concerns about your mark or the application process, reach out to a Rocket Lawyer network attorney for answers to your specific trademark registration questions.
Rocket Lawyer Trademark Services can also help you with the entire process, from conducting a trademark search to filing your trademark application. If you are in a hurry, ask Rocket Lawyer Trademark Services about expedited filings.
This article contains general legal information and does not contain legal advice. Rocket Lawyer is not a law firm or a substitute for an attorney or law firm. The law is complex and changes often. For legal advice, please ask a lawyer.