You’ve picked a name, searched for conflicts, and determined that your trademark is distinct and is not likely to cause confusion with any other trademark. Does this mean that you’re ready to register it with the USPTO? Not yet. You need to consider whether you need the benefits of federal registration.
Remember, you automatically gain trademark rights in all the locations where you use it first. If you market your products to the nation on the internet, this might automatically qualify you for those rights. But even if this is the case, there are advantages to registering your mark with the USPTO.
The benefits of registering your trademark are as follows:
- You gain exclusive nationwide rights to the mark. (Except for those territories where someone used the mark before you did.)
- You get to place the ® symbol after your mark.
- Your trademark appears in the USPTO database for others see which might thwart would-be infringers.
- You give official notice to everyone that the trademark is unavailable.
- You get to immunize the trademark once five years have elapsed from its registration.
- You stand a greater chance of winning an infringement lawsuit.
If you decide that you want these benefits, then you have to actually use the trademark in commerce. If the mark involves goods, then this means that you’ve shipped your goods to a store to be sold or sold them in your own store. If the mark is attached to services, it means that you’ve marketed your services under the trademark and can deliver the services to your customer. If you haven’t used the trademark yet in commerce, you may file an intent-to-use application.
If you used the mark in commerce, then it must be used in commerce that Congress regulates. This means you shipped your product across state, territorial, or international boundaries. It also means that you’ve advertised your services outside your state, used the mark to conducts services across state lines (ecommerce, consulting via phone to out-of-state resident, etc.), or used the mark in services in more than one state, territory, or country. If you haven’t used the mark in interstate commerce, but intend to do so, you may file an intent to use application. Now you’re ready to file the application with the USPTO.
Before you do, you need to gather some information. It will make the process much easier. You’ll need:
- The date you first used the mark in commerce that Congress regulates.
- The party who will own the trademark (you personally or your company).
- A specimen showing how the mark is used: For goods: a photo of labels, tags, containers showing the mark (don’t use advertising materials, price lists, internal company documents, catalogs, press releases). For services – a scanned copy of brochures, billboards, direct mail pieces, menus, advertising and marketing materials, letterhead stationary and business cards, screenshot of a full web a page (don’t use news releases, invoices, packing slips, or documents only showing trade name). A graphic file if you’re filing a stylized mark (a word in a specific graphic manner) or design mark.
- Your international class selection. (The USPTO uses a system of descriptive categories of goods or services to keep track of registered marks. There are 45 classes in all. You can find these on the USPTO website.)
- Your disclaimers. You may disclaim generic or non-distinctive parts of your trademark such as the word pizza.
If you’re registering a name combined with an unusual typeface, you should file an application for the unadorned word and another for the adorned name. If money is an object, then register the unadorned name. If you use your name with a graphic image, you should register the name and the name combined with the graphic image. If money is an object, then file the name combined with the graphic image. If the graphic is not distinctive, then register the name by itself.
With this information in hand you’re finally ready to register your trademark. You can either do this online or you can file hard copies. It will cost you $325 to file online (you can file an application for $275 with some pre-filled information) and $375 for paper filing for each international class. When you finish the application, you wait.
An examiner will typically contact you within three to six months of filing. If there’s a problem with your application, you’ll receive an action letter explaining the problem. You often can fix the problem with a phone call to the examiner. When the examiner approves your application, you’ll receive a notice of publication. Anyone can oppose your registration for 30 days after your registration (only 3% of marks are opposed). If no one opposes the registration, you’ll receive a certificate of registration. During this process you might get one of three rejection letters:
- Technical rejections such as incorrect applicant name, ambiguous authority, class identification problems (you can normally fix these problems through an amendment).
- Substantive rejections such as a determination that the mark is generic or merely descriptive or will likely be confused with another mark (a response takes more effort and may require help from an attorney).
- Final rejections are received normally after you’ve had a chance to respond to the other two rejections.
If you don’t want to fight a rejection or if you receive a final rejection, you may always abandon your application or appeal the decision.