Before we get into the how, lets start with the why.
Trademark registration is not mandatory. In fact, you technically have protections for your mark even if you never officially register it. These protections are based in a combination of common law and the idea of priority use. If your business only serves the local community, registering with the U.S. Patent and Trademark Office (USPTO) may seem like overkill.
However, registering your trademark is also an important, and relatively easy, step in growing your small business. Further, only registered marks can gain the highest protections under federal trademark law.
Registering your trademark is a legal claim of ownership over the mark. By registering, you gain several important benefits. These include:
- Your mark appearing on the USPTO’s online database
- A federal, legal presumption of your ownership over the mark
- Exclusive rights to use the mark nationwide
- The ability to cite your U.S. registration when expanding to foreign countries
For these reasons, while registering a trademark isn’t required, it’s still highly recommended for any serious business owner.
In this article, we’ll list the exact steps you need to go through to federally register a mark with the USPTO. By the end, you’ll see that the process itself is actually surprisingly easy.
“Use-in-Commerce” Versus “Intent-to-Use” Applications
A good starting point for people thinking about registering a trademark is figuring out the distinction between “intent-to-use” and “use-in-commerce” applications. For our purposes, these definitions mean exactly what they sound like. “Intent-to-use” implies you intend to use the trademark in the future. “Use-in-commerce” means you’ve already made a sale using that mark.
Your choice between the two will affect how you eventually file your application with the USPTO.
Most of the time, when people register their first trademark they’ve already used their mark in commerce at least once. For example, placing the mark or business name you’re trademarking on a shipping box and sending it out with a purchase counts as “using” the mark.
The application process is much simpler for businesses who’ve already used their marks in commerce.
Businesses that have used their mark before will file a “use-in-commerce” application. After receiving this application, a USPTO attorney will look it over to determine if the mark meets USPTO guidelines. Once they approve the application, you’ll have a federally registered mark.
For “intent-to-use” applications, the process is basically the same. However, you’ll also need to file additional paperwork after the USPTO approves your trademark. This paperwork boils down to proving that you’ve used the mark in commerce within 6 months of your original approval date.
For this article, “use-in-commerce” applicants can only follow steps 1-4 when filing their application. “Intent-to-use” applicants must also perform steps 5 and 6. All trademark applicants should also glance over our section on protecting your trademark.
The Main Process
Step 1. Perform a Trademark Search
Before actually submitting an application, you should always perform a thorough trademark search to look for any conflicting marks. Of all the steps you’ll perform, this one is the most deceptively easy. If you fail to properly search for similar marks, the USPTO can automatically reject your application and you’ll lose a lot of money, time, and effort.
Thankfully, we’ve created several resources to glance over while performing a thorough trademark search:
- How to Perform a Trademark Search in Three Steps
- Interpreting Trademark Search Results
- How do I Pick a Strong Trademark?
In essence, the process boils down to two parts. First, you’ll search the USPTO’s TESS database (Trademark Electronic Search System) for similar trademarks. Then, if you don’t find any conflicting marks in this first search, you’ll either purchase or create a more thorough Trademark Search Report. This report generally covers every similar trademark throughout the entire country, and provides you with a plan for using your trademark in future business.
This second part is where trademark searches become deceptively easy. Failing to perform a proper trademark search can lead to infringement lawsuits and other problems down the road. It is always recommended that you purchase a search report from an experienced trademark lawyer before you spend money on registering your trademark. Performing a thorough trademark search and simply browsing TESS are two entirely different matters.
Remember that finding similar marks during this process is perfectly fine and normal. Problems only appear when these marks appear in the same trademark class as your business.
Step 2. File the Application
Once you conduct a full search, the next step is to simply file the paperwork. The USPTO provides multiple resources for doing this. You’ll also need to decide whether you’ll file your trademark on the Supplemental or Principal Register. In most cases, you’ll choose the principal register, then file for the supplemental if they reject your first application.
You should also note that the application fees are non-refundable. If your first application doesn’t go through, you’ll be out several hundred dollars and will have to file again.
Step 3. Receive a Response
Generally, however, the USPTO officer in charge of your application won’t reject your application outright. They will instead send you an Office Action that lists the problems in your application. Once you correct these problems, you can refile under your original application. Only a “final” Office Action is un-correctable. If you receive a final Office Action (marked as such on the first page), you’ll need to start the whole process over again.
If your original application is accepted, it will move to the next stage without any extra effort on your part. Keep in mind, however, that you only have six months to respond to a rejection before the USPTO considers your mark abandoned. You should periodically check on your application status on the USPTO website.
Step 4. Publication in the Official Gazette
Accepted trademarks are published in the Trademark Official Gazette (TMOG). This is the USPTO’s official journal. They publish all trademarks from the previous week on Tuesdays. The Gazette contains bibliographic information and a representative drawing for each mark that is published that week.
If your trademark was accepted and published in the Gazette, you should review all of the information and make sure it accurately represents your mark.
The Gazette counts as public notice of your mark, so if someone thinks that your mark may damage theirs, they can file an opposition. In addition, it also serves a “constructive notice” in the legal sense. This basically means that ignorance of your mark doesn’t count as an excuse for infringement. This is also why performing a trademark search so early in the application process is so important.
As stated earlier, these final two steps only apply if you filed an “intent-to-use” application.
Step 5. Use your Mark in Commerce
If no one opposes your mark after it appears in the Gazette, you will receive an official Notice of Allowance (NOA). When you receive the NOA, you will have six months to use your mark in commerce.
If you need more than 6 months to use your mark in commerce, you will have to pay a fee and file for a six month extension.
Step 6. File Statement of Use
Once you’ve successfully sold a product or service with the mark, you must file a Statement of Use (SOU). The SOU should include pictures of the products you are selling as well as a proof of purchase (i.e. a receipt for the sale).
After you file the SOU your mark will be moved out of the intent-to-use stage and become a federally registered trademark. You can now use your product with the ® and enjoy all the benefits of federal registration.
Protecting Your Trademark
Sadly, in the real world trademark law seldom comes down to a simple 4-6 step process. In fact, the large majority of your effort will go into maintaining your trademark after the fact.
The most common action you’ll have to take is renewing your trademark. This process starts five years after your original application goes through. You’ll then have to renew your trademark periodically for the rest of its life.
After five years of use your mark becomes incontestable. This is the highest form of trademark protection offered by the U.S. government. Basically, you are given the presumption of ownership in almost all legal cases, as well as several other stronger protections.
Finally, you must police your mark for as long as you intend to use it to prevent infringement. The USPTO doesn’t actively protect your mark, that’s your job. In any case of infringement, you must file a complaint to the Trademark Trial and Appeal Board, then sue the infringer for damages in civil court.
Filing an application for a trademark is, on paper at least, a pretty simple process. However, in practice it can often end up being both complicated and quite expensive if not done correctly.
When filing your first trademark you should probably seek the advice of an experienced trademark attorney. Speaking with an attorney can help you navigate the numerous pitfalls surrounding the trademark process and help you save both money and time in the long run.
No matter which path you choose when filing, however, most of the actual work comes in protecting your trademark after it’s officially registered. Policing your mark and renewing it periodically is a necessity in protecting your business’s mark into the future.