How Do I Register a Trademark?

How can you register for a trademark for your business?

Businesses need to distinguish themselves in the marketplace. Catchy names and memorable logos are helpful, so as to ensure that consumers recognize your company's products or services as compared to those of your competitors. Trademarks are increasingly important in the Internet era, where companies are competing for business across the nation by marketing goods online. What's the purpose of federal trademark registration, and how does one go about registering a trademark?

Advantages of Federal Registration

Importantly, it is not required for a trademark to be registered. You can acquire what are known as "common law" trademark rights simply by using your mark, whether a name or a logo, in commerce within your community. In other words, you can simply open a bakery called "Thelma's Tasty Treats" and put that name on signs and boxes; that name will be "yours" within that immediate geographic region without formal registration.

However, you can also register your mark federally. The U.S. Patent and Trademark Office (USPTO) is the federal agency charged with oversight over issuing and maintaining trademarks. It is true that registration is a somewhat bureaucratic process with some minor fees, paperwork, and annoyance. But there are many benefits to federal registration.

First, registration allows your business to scare away competitors. Your mark will be listed on the USPTO's register of trademarks, which will come up when others attempt to search for available marks. It will also allow you to use the ® symbol. Between the registration listing and the ®, you are likely to ward off businesses that might try to infringe on your mark, since they will see that you are invested in your legal rights.

Second, it will give your mark the presumption of validity nationwide, rather than just in your local geographic area. This is particularly helpful for businesses that seek to expand, or businesses that sell their goods or services online. It also provides some legal protection if you face a situation of international counterfeit importations, allowing a court to order certain border protections.

Third, registration can make a trademark infringement lawsuit more likely to succeed. Not only does your mark have the presumption of validity (shifting the burden of proof to the defendant), but you are also entitled to certain damages if you prevail against the defendant in court.

U.S. Patent and Trademark Office Registration System

The USPTO makes trademark registration fairly self explanatory in most instances. Indeed, the agency's comprehensive roadmap to registration will help guide you. While there are several "sub-steps" to the process, the following are the basic and most significant ones when applying for a trademark application:

  • Decide on the mark itself. This is no small task; once you choose a name and invest in marketing, you will not want to change it. So think carefully before submitting! Hold a small focus group and ask friends and family for their feedback.
  • Perform a search for competing marks. You can do this yourself on the USPTO database, and/or you can hire a professional firm or attorney to engage in this process.
  • Fill out the trademark application on the USPTO website. The forms are fairly self-explanatory. You will list your name, business information, and describe your mark. You will also need to pay certain filing fees with your application. These are generally no more than a few hundred dollars, though the price will increase depending on whether you wish to register an image as well as a word mark.

You will probably hear from the USPTO around three months after your application is submitted. The examining attorney will write to you to inform you whether your application meets certain legal requirements or whether you need to submit corrections. For example, the attorney will inform you whether your preferred mark as already been chosen, or whether your application omitted required information.

Registration can become far more complicated, however, if someone challenges your mark. For example, if you attempt to register your mark but another business objects, claiming that it will confuse consumers due to similarity to its mark, you will face a legal proceeding (sometimes known as trademark prosecution). In most instances, however, you can avoid these battles by doing careful research before trying to register a mark.

Like with any federal agency, the USPTO may feel impersonal and slow-moving to those attempting to obtain answers from it. Fortunately, you can monitor the progress of your application on the Trademark Status & Document Retrieval (TSDR) page of the USPTO's application website.

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