Getting a trademark for your business’s name, logo, or slogan is the first step to protecting your business’s brand and identity. If you spent hours upon hours coming up with the perfect business name and paid a graphic designer top dollar to design your logo, wouldn’t it suck if one of your competitors decided to ride your coat tails and use a similar name or logo? Yes! It would!
Having a federally registered trademark prevents others in your industry and similar industries from using your trademark or something similar to it. If you want to get a trademark for your business name, logo, etc., here’s how you do it:
Step 1: Search!
Before you start filling out any trademark applications or shelling out major bucks for some third-party “not attorneys” website who will do it for you, you first need to make sure your trademark won’t be infringing on somebody else’s trademark. You can search registered trademarks and pending applications through the US Patent and Trademark Office. When searching, make sure you search for trademarks that are similar to yours, not just identical. You need to search for variations of the words, similar words, etc. Just because you do not see any other trademarks that are exactly identical to yours does not mean that you will get through the trademark process free-and-clear. Searching for logos can be a bit more complex than a normal word search, but the USPTO’s website has instructions and guidelines for doing so.
You also need to search for state and common law trademarks. This can be done by visiting your state’s Secretary of State website and searching their trademark records. Another great resource for searching for common law trademarks is, of course, to Google it! A simple internet search will help you determine if your business name is already being used.
Step 2: The Application.
Once you have done a search and are confident that your trademark is unique and available, you can move on to the trademark application. The trademark application can be found and submitted directly through the USPTO’s website. You do not need to use any other third-party website to submit a trademark application. If the website you are visiting claims to be for registering trademarks but it does not have a uspto.gov address, avoid it. The TEAS-Plus application that is available through the USPTO’s website is suitable for many, if not most, trademark submissions.
The application starts with gathering some information about the trademark owner. That’s you/your business. Then the application will ask about details of the trademark itself.
If you are trying to trademark a name or slogan, you would input the name or slogan in the section that asks for a drawing of the trademark. If you are trademarking a logo or a stylized design of your business’s name, you would upload a photo of the logo as the drawing.
For logos or stylized images, you will also need to describe, in great detail, the logo or image. You want to be very descriptive, to the point of obnoxious. If your logo has certain colors in it that are valuable to your brand, then you may want to claim those colors as a feature of the trademark as well. Again, you need to be very detailed if you are claiming colors as a feature to your trademark.
The application form is then going to ask about the class of goods/services that your trademark should be registered in, and you will need to provide a specimen along with it. The class of goods or services that you select should represent the goods or services that your business is going to provide to consumers. For example, a law office’s trademark would be registered in a class like “legal services.” You can select a class that is broad, eg. legal services, or a class that is narrow, eg. legal services in the field of business law. You can also register your trademark in multiple classes if your business offers various goods or services.
Whichever class or classes you select, make sure you can prove it. That is what the specimen does. The specimen must show your trademark being used in commerce in connection with the class of goods or services that you select. So for the “legal services” class, your specimen needs to show that your trademark is being used in commerce in connection with legal services. For a food truck, your specimen needs to show that the name or logo is being used in connection with a food truck, and so on and so forth. Typically, a screen shot of the business’s website is a good option for the specimen. Most websites will show the business name or logo at the top of the page with a description of the services or goods that the business provides. Ideas of other acceptable specimens can be found on the USPTO’s website.
After you give all the info about the trademark, class, and specimen, you can submit the application.
Step 3: Wait…
The next step after you submit the application is to wait…and wait…and wait a little longer. About three months or so later, an Examining Attorney will be assigned to your trademark application.
Step 4: Office Actions.
For a majority of trademark applications, the first communication you will receive from the USPTO will be an Office Action. Like people, Office Actions come in all shapes and sizes. Some are non-substantive Office Actions. These are the nice Office Actions, usually asking you to disclaim a feature of the trademark, or possibly asking you to correct something in your application. Typically they can be responded to quickly and any issues with the application can be resolved easily. Substantive Office Actions, on the other hand, can be a real pain in the you-know-what. Substantive Office Actions will say that your trademark application should be denied for one reason or another, often it is due to a “likelihood of confusion” with another trademark. (That’s why we did the search beforehand to try to avoid those Office Actions.) If you receive an Office Action like that, it is best to contact an attorney ASAP because responding to them can be very very difficult.
Step 5: Wait some more.
If you do not receive an Office Action, or if you do receive one and respond to it and the USPTO accepts your response, then a few months later your application will be published for opposition. Publishing for opposition gives others an opportunity to oppose your trademark registration. If nobody opposed the trademark (which rarely happens), then you will wait a few more months. Then finally, your trademark will be registered!
While it may seem easy and straight-forward to get a trademark, the process is actually far from easy. It is very common to have issues come up with the specimen, class, and of course, the dreaded Office Action. Because the process to get a trademark can be so complex, it is always best to have an attorney assist you with it.