File a Trademark Application - Protect Your Brand
Your trademark application is the first step in formalizing your brand and protecting it. Get your branding journey off to a strong start by calling a professional.
How to File a Trademark Application
Trademark registration gives you the right to use the ® (registered trademark) service mark next to your company name, logo, slogan, or name brands of products your company manufactures, markets, or sells.
The trademark application process can be tedious. Do-it-yourself intellectual property review (IPR) toolkits may not deliver what you need to ensure the United States Patent and Trademark Office approves your application.
On the other hand, The Patent Professor®, a licensed attorney, can help your application process go as smoothly as possible. Read on to learn the steps of filing a trademark application.
What Is a Trademark Application?
A trademark application is an application filed with the United States Patent and Trademark Office to secure a registered trademark for your brand.
You can trademark various elements of your brand to eliminate the likelihood of confusion between your brand name and products and those of your competitors'.
When Should I Apply for a Trademark?
You should apply for a trademark before starting to write your message about your brand and its unique value proposition, or what sets it apart.
Begin with a trademark search through the Trademark Electronic Search System (TESS) to ensure no other individuals, brands, or companies have trademarked something similar to your intellectual property.
What Types of Intellectual Property Can I Protect with a Trademark?
How Do I Start a Trademark Process?
A licensed attorney specializing in trademark and patent law can help you with the trademark search. With expertise in using the TESS USPTO database and the ability to search other sources for trademarks registered at the state, federal or international level, The Patent Professor® can help streamline your trademark search while ensuring precise results.
Your trademark attorney will also search extensively for common law trademarks, which are marks that are widely recognizable but not formally registered with the owner.
Once you or your attorney has completed the search, you can begin the next steps in the trademark process.
Four Things to Consider Before Trademark Registration
Who owns your trademark?
Will you register the trademark under your own name as an individual entrepreneur or as a corporate entity? If you decide to register a trademark under a company name, you’ll need to complete due diligence, first. Ensure the corporate entity is active and in good standing with the state department or department of commerce in which the company is incorporated. Basically, make sure the company exists before you attempt to file a trademark under its name.
What type of goods or services does your trademark identify?
When you file your trademark application, choose the correct class for the goods and services your trademark represents. If you misidentify the category, you could limit your trademark rights.
You may have to meet additional requirements to file a trademark depending on the goods and services connected to the trademark. An IP attorney can help you navigate these requirements, reducing the chance that the USTPO won’t issue an Office Action, which is a letter explaining why your trademark registration was denied.
Will your trademark be used for Commercial Use?
Commercial use refers to the use of trademark rights connected to goods or services actually being sold, advertised, or marketed. Selling your goods or services to family, friends, co-workers, or associates doesn’t count as commercial use. To qualify for a federal trademark, the items or services associated with your trademark application must be marketed or sold across state lines, including to customers outside your state.
If you can’t prove you’re selling, or intend to sell, everything associated with the trademark, your trademark could be cancelled for non-use. You may even be charged with fraud if you knowingly signed a statement saying all items associated with your brand fit the “Commercial Use” parameters.
Is the trademark being used properly?
Once your trademark application has been approved, you’ll need to show it in proper use before it’s officially registered.
You must show a “specimen,” or example of your product or service showing that you’re using the mark property. You have several options to show “proper specimens” of your trademark in use, including:
At this point, your trademarked brand name, slogan, or logo should only bear the ™ service mark. You cannot legally use ® until you receive notification that your trademark is registered with the USPTO.
What Type of Trademark Application Should I Use?
The United States Patent and Trademark Office provides two choices when filing for a trademark through their Trademark Electronic Application System (TEAS):
TEAS Plus – TEAS Plus comes with reduced fees and payment requirements. TEAS Plus provides a streamlined trademark process. The trademark applicant can only apply to use the trademark on goods and services already listed in the goods and services ID manual and approved by the United States Patent and Trade Office.
Using TEAS Plus can substantially improve your odds of your trademark application gaining approval the first time you submit it.
TEAS Standard – If you apply using the standard application, you don’t need to select an identifying category for your goods and services right away. The application fee is higher. You will, eventually, need to submit all the same information for a TEAS Standard form as for TEAS Plus, but you can take more time doing so. Applicants must meet all the deadlines presented by the USPTO to reduce the risk of rejection.
Trademark Trial and Appeal Process
More than half of TEAS Standard trademark applications are denied upon the first submission. Using a TEAS Plus application improves your odds but, even so, many individuals and companies applying for trademarks get rejected the first time.
If you receive an Office Action letter from the examining attorney at the USPTO, your trademark may go through the trial and appeal process.
Trademark applications are often refused when the examining attorney discovers a “likelihood of confusion” between the pending trademark and prior art, or existing trademarks and brands.
The USPTO examining attorney evaluates several characteristics to determine the likelihood of confusion:
Whether the current goods and/or services are related to the new mark – Your trademark may be approved if your logo or brand looks similar but refers to a completely separate industry, which would reduce the likelihood of confusion.
The strength of the commercial impression between the trademark and the brand or product plays a crucial role in whether the USPTO will issue a “refusal to register” your trademark.
An intellectual property attorney can help you make modifications to your design to reduce the likelihood of confusion and gain approval for your trademark application.
Can I Apply for a Trademark Myself?
How Can a Licensed Attorney Help Me Navigate the Trademark Process?
Rely on The Patent Professor®, a licensed attorney with a passion for patent and trademark law, to help you navigate the trademark application process. Call us now at (877) 728-7763.