Your name, logo, or slogan are important parts of your business’s identity.
To protect that identity—and your business’s reputation—it is important to file a trademark application form to start the process of registering your trademark.
Doing so is relatively easy and can save you many legal headaches in the long run.
Whether you file an application seeking registration of a trademark on your own or with an attorney’s help, here is what you need to know.
Step 1: Trademark Clearance Search
Also called a “knockout search,” we encourage you to take this step.
One purpose of conducting a search is to determine whether your trademark is eligible for registration in the first place.
The U.S. Patent & Trademark Office (USPTO) will not approve a trademark application for a mark that is confusingly similar to another mark.
The second purpose of a search is to determine whether the use of your mark may violate the rights of someone else that is using a confusingly similar mark.
Conducting a clearance search can be difficult; knowing what to search to make sure you uncover any conflicting trademark registrations takes practice and experience.
As a result, many business owners opt to hire a trademark lawyer to have the search conducted for them.
Step 2: Complete the Trademark Application Form
The USPTO offers registrations online through its Trademark Electronic Application System (TEAS).
There are two different filing options you can choose from TEAS Plus or TEAS Standard.
TEAS Plus applications cost less ($250 per class compared to $350 with TEAS Standard) but come with more requirements.
Despite the higher cost, many people prefer TEAS Standard because it offers more flexibility overall.
Regardless of which application you choose, every trademark application requires the same basic information.
This is the same information an attorney preparing a trademark application for a client would ask for:
- The name, address, and entity information of the owner of the trademark (usually the business entity using the mark);
- The name, email, and mailing address of the person with whom the USPTO should communicate about the application (usually an attorney);
- An image or drawing of your trademark if you are registering more than a word or phrase (for example if there is a graphic design element you need to protect);
- A list of the goods or services your trademark represents and the relevant international class for each; and
- The date when your trademark was first used in commerce.
At the end of the trademark application form, you will need to complete and sign a declaration that the information you’ve provided is true and not misleading.
Understanding Trademark Classes
Trademark law categorizes each trademark according to the goods or services it covers.
There are currently 45 distinct classes, with each covering a particular set of goods or services.
For example, Class 16 covers “paper goods and printed matter” while Class 45 covers legal and other professional services.
Intent to Use vs. Use-Based Applications
Trademark protection is unique in that you can get it only if you are actually using your trademark.
A majority of trademark applications are use-based, meaning they cover a mark that is currently in use in commerce.
By contrast, an “intent to use” application covers a trademark that you plan to use in commerce in the future.
A key part of the intent to use applications is the honest intent to use the mark in the future.
In most cases, you won’t be allowed to file an intent to use application simply to “reserve” your trademark for future use.
Step 3: Submit the Completed Trademark Application
Once you’ve completed the trademark application form, signed the declaration, and paid the fee, your application is ready to submit.
After doing so, you will receive a serial number allowing you to check on the status of your application.
Typically, the USPTO will assign your application to an examining attorney for review within approximately three months of the submission date.
Because the USPTO receives a large volume of applications, however, it may take as long as six months.
Can I File a Trademark Application for Free?
No, federal (and even state-level) trademark applications always come with a fee.
As explained above, the exact fee may vary depending on which application type you choose.
If your budget simply cannot make room for the application fee, you may be able to take advantage of common law trademark rights.
Simply using your trademark in commerce builds these rights.
Keep in mind, however, that your protection is much more limited without a federal registration.
For example, common law trademark protection extends only to the immediate geographic area in which you use your trademark, while a federal trademark is designed to cover the entire United States.
Step 4: Monitor Your Application
Over the next several months, it’s important to monitor your application and respond to any communications you get from the USPTO.
If the examining attorney discovers any issues with your application, you will receive an office action explaining the issue and the reason for the application denial.
Step 5: Maintaining Your Mark After It Is Registered
If the USPTO approves your application, it will publish your mark for 30 days and thereafter you will obtain a Registration on Principal Register, giving you full federal trademark protection.
Going forward, you will have to file additional documents to renew your registration.
If you originally filed an intent to use application, your mark will not mature into a Registration right away.
Instead, you’ll have to submit a “Statement of Use” with evidence that you’ve started using the mark in commerce before the USPTO registers your trademark in Principal Register.
Need Help Filing a Trademark Application?
Registering a trademark is not as simple as it may first appear.
Even after you’ve successfully registered it, failing to follow the proper procedures may result in losing your trademark rights.
The Polasek Law Firm (TPLF) has years of experience assisting clients with their trademark and other intellectual property matters.