For example, let’s say your business name is Tinkerly, and your branding colors are gold, white and blue. We’ll also assume you’ve managed to grow a successful and reputable brand. Some ill-intentioned competitors may want to copy your business name or visual identity to trick your customers and benefit from your success. With a trademark, you can sue your competitor for copying your property.
All You Need to Know About Registering a Trademark
This post will discuss what you need to know about trademarks. You’re going to learn how to register a trademark locally and internationally, among other things.
What Is a Trademark?
A trademark is any word, symbol, phrase, or insignia representing your brand, products, and services. It’s a type of intellectual property that distinguishes your business from competitors and helps customers identify your brand. A classic example of a trademark is Twitter’s logo or McDonald’s golden arch.
Here are three ways a trademark helps your business:
- Identifies your brand, goods, and services
A trademark enables you to stand out from the crowd. It allows your customers to identify your business, whether at close range or from a distance. For example, if you see a restaurant with yellow golden arches, you’ll quickly know that it’s McDonald’s.
- Legally protects your brand
If you register your trademark and a competitor copies it, you have the legal right to sue them for trademark infringement. If, by contrast, you haven’t registered your mark, you can’t sue the competitor since there is no way to prove the trademark is yours.
- Protects against fraud or infringement
When you own a trademark, you can attach a symbol to inform your competitors and customers that it is yours. The trademark symbol you use can be TM, SM, or ®. These symbols help prevent anyone from using your trademark for personal gains.
Difference Between Owning a Trademark and Registering It
You can claim ownership of a trademark as soon as you begin using it to identify your brand and your goods and services. Owning a trademark comes with a few rights, but they are limited only to your geographical location. In this case, you haven’t yet registered your mark but are still informing your customers and competitors that it is your property. Owning it won’t prevent someone in a different state from using it.
To protect your trademark at the national level, you need to register it with the USPTO (the United States Patent and Trademark Office). A registered trademark offers more protection and has broader rights than an unregistered one. By registering, you protect your mark in all states in the United States.
What Are the Types of Trademarks?
The term trademark is broad. There are several types and categories that fall under it. Let’s have a look at the types of trademarks:
The first type of trademark is simply the term trademark. This type helps identify and distinguish the source of a good or service. In most cases, it is used to refer to products rather than services.
Service marks help identify the source of a service. You can use this trademark for services such as legal counsel, computer repair, and so on. Although technically different from a trademark, service marks provide the same rights and protections as a trademark.
A strong trademark clearly denotes your business, goods, and services. It is inherently unique, creative and offers more protection. With a strong brand identity, you can easily prevent people from copying or using it without your consent. Examples of a strong trademark include:
- Fanciful trademarks
These are invented marks with no meaning other than in the context of the good or service. An example of a fanciful mark is Nike. This word has no meaning in the English language. It only gets meaning once you associate it with the goods or the entity.
- Arbitrary trademarks
These trademarks refer to words and names that have a meaning in the English language but are not in any way related to the goods and services offered by the business. A good example is the brand name Apple. We all know that apples are fruits, and they have no relation to computers and phones.
- Suggestive trademarks
These are names and words that show some quality or nature of the product or service. They offer the customer an imagination of how they will look or feel when using the product. An example is the brand name Jaguar which implies speed and agility without referring to a car manufacturer.
Weak trademarks are difficult to protect and are, in most cases, not registrable at the national level. Examples of weak trademarks include:
- Descriptive trademarks
This trademark describes the nature of a good or service in an obvious way. The customer knows what they’ll get once they see the brand name or design. Descriptive trademarks differ from suggestive trademarks in that there is no subtlety. They don’t arouse any imagination.
A hypothetical example of a descriptive trademark is a business named “Paul’s Pet Grooming Services.” We already know what service we will get from this business and who will most likely serve us. Descriptive trademarks can be federally registrable in some situations.
- Generic trademarks
Generic trademarks plainly describe the good or service. They are the weakest marks and are not registrable at the federal level. An example of this trademark is when you name your business “Yogurt” because you sell yogurt.
Rather than trademarking a product or service, you can register a trade or business name. In this case, the type of trademark that you are applying for is a trade name.
A trade dress identifies the design and appearance of a product’s packaging. It can also denote the exterior and interior design of a business, for example, a restaurant.
How to Register a Trademark
Trademarks in the United States are registered with the USPTO (the United States Patent and Trademark Office). The application process is, in most cases, done electronically. Here are the steps to follow when registering a trademark.
1. Conduct a Trademark Search
Before registering a trademark, take some time to conduct a trademark search to ensure your chosen name, logo, or design is available. Searching will help ensure you don’t mistakenly infringe on someone else’s intellectual property.
The USPTO offers a search database called TESS (Trademark Electronic Search System). Head to USPTO’s website and search for your trademark in the TESS database. Proceed with your registration once you assess that the mark is available for use.
2. File for Federal Trademark Protection
Your next step will be to file the trademark with the USPTO. You can file online using the TEAS (Trademark Electronic Application System) system or through a paper application. If you apply through the TEAS, you can select between the TEAS Plus and TEAS Standard filing options.
The TEAS Plus option requires you to meet more requirements when filing, and you pay a lower fee. The TEAS Standard option, by contrast, doesn’t have many upfront requirements, and the filing fee is higher. You still need to meet all the requirements eventually.
Here is the information you may need to submit in your application process:
- Name and contact details of the owner of the trademark.
- Nature of trademark (can be words, phrases, numbers, logo, symbol, color, sound, and so forth).
- Description of the trademark.
- An example of the mark in use.
- An accurate description of the goods and services associated with the mark.
- A signature with a date.
When applying for your trademark, you need to select a filing basis. The four choices that you can choose are:
- Use in Commerce – this filing basis is for trademarks associated with goods and services you already sell or offer.
- Intended to Use – use this option if you plan to use the trademark in business within three to four years.
- Foreign Application – use this basis if you filed a foreign application within six months for the same goods and services in another country.
- Foreign Registration – use this basis if you own a foreign registration associated with the same good or service in your country.
3. Trademark Examination
Once you file your application, it may take three to four months for examination and review to occur. The examining attorney will either approve your application or issue an office action. An office action is a document issued by the examining officer in the USPTO requiring you, the trademark applicant, to fix an error in the application. You need to respond to the office action within six months.
The examining officer may also reject your trademark application if the mark is the same or similar to a preexisting trademark. He might also dismiss it if it is a weak trademark.
Once you file your trademark with the USPTO, you can check your application status on the Trademark Status & Document Retrieval (TSDR) portal. Use the serial number and confirmation receipt issued by USPTO after submitting your application.
4. Trademark Approval
Your trademark will get registered if the examining officer is satisfied with your application and finds the mark fit for registration.
During the filing process, other trademark owners can oppose your mark. They can oppose it if they feel it has similar attributes to their own. Opposing does not automatically lead to a rejection, but it may slow the approval process.
Once approved, the USPTO will publish your mark in The Trademark Official Gazette. This publication lists all newly-registered trademarks, canceled marks, and renewed trademarks. The USPTO creates this publication weekly.
The trademark filing fee ranges from $250 to $350 depending on the class of products or services and the filing option you select. The filing fee is non-refundable regardless of whether your application gets approved or rejected.
How to Register a Trademark Internationally
Federal registration is only valid in the United States. If you are the owner of an approved or registered trademark with the USPTO, you can register the mark in other countries through the Madrid Protocol.
The Madrid Protocol allows you to register your trademark in multiple countries with a single application. However, you can only register in member countries (countries that joined this international system).
Using a Lawyer Versus Doing It Yourself
The process of registering a trademark is somewhat straightforward. You don’t need an attorney if you know how to go through the process.
You may, however, need an attorney if you don’t know much about trademark registration. The attorney can guide you through the application process to ensure you don’t make mistakes many people make when applying for a trademark.
For example, you need to conduct a trademark search and determine if you have a weak or strong mark before applying. Doing this will help reduce the chances of rejection. Remember that the filing fee is not refundable. You also need to select a filing basis, among other requirements.
Using the Trademark Symbol
There are three trademark symbols that you can use depending on whether you register or own the trademark. They are:
- TM –This symbol stands for “trademark.” You can use it when you own a mark for the source of goods but haven’t registered it with the USPTO.
- SM – This symbol is the same as TM but used for services rather than goods. You also don’t have to register your trademark to use SM.
- ® – This symbol stands for “registered trademark.” You can only use this symbol once you successfully register your mark with the USPTO.
Use these trademark symbols together with your mark. You can place them on the right side of your trademark as a superscript or subscript.
A trademark helps identify your brands and your goods and services. It prevents others from copying or using your intellectual property without your permission.
There are several types of trademarks. Some are federally registrable, for example, strong trademarks. Others, such as weak trademarks, are not registrable. You can claim ownership of a mark from the moment you start using it to identify your business, goods, and services. But to protect it in all states, you need to register the mark with the USPTO.
The entire filing process may take a year to a year and a half. And once approved or registered, you can register your trademark internationally through the Madrid Protocol.
You don’t need help from an attorney to register a trademark. Still, it’s advisable to work with one if you don’t know the process or the requirements. The three symbols that you can use are TM, SM, and ®. The one you use depends on whether you deal in goods or services and whether you’ve registered the mark or not.
Below are a few resources to expand your knowledge about trademarks that you may find interesting and useful.
You may feel more comfortable using a lawyer instead of registering your trademark on your own. You can look at the search results for a trademark lawyer that can help you streamline the process and ensure everything is submitted correctly. But before you do, see the search results for what to look for in a trademark lawyer.
Examples are a great way to learn. By looking at examples of registered trademarks, you can gain an overview of the most popular designs and ideas for your trademark. Take a few minutes to browse the search results leading to trademark examples.
If you don’t want to register your trademark yourself and you’re not interested in hiring a lawyer, you may want to consider using a service specializing in trademark registration.
By using a service with a good reputation, you can be confident that they have the experience needed to guide you and get your trademark registered with the least amount of effort. Take some time to explore the search results for trademark registration services.
Books are a great way to broaden your knowledge on virtually any topic. With my library of non-fiction books, I rarely read them from cover to cover. Instead, I have them on hand, and I know I can go to the chapter containing the information I need by flipping through the table of contents. If you want to learn more about trademarks, then the books available on the market are another option. View the most recent Google search results for books related to trademarks.
The news is another great source of information. By using a new site like Google News, you can type in your keyword and get a list of all the current and archive stories covered by the media. Many of the stories will be about trademark infringement and companies applying for trademarks. See Google’s news search results related to trademarks.
YouTube is yet another source of great information. Again, you’ll find a lot of information related to trademarks. In addition, you’ll also want to keep an eye on the related videos because, many times, they lead to topics you may not have considered and allow you to broaden your understanding of the topic. The link below leads to videos related to trademarks. Take a few minutes to see the most recent videos related to trademarks.