Last updated on January 18th, 2019
Registering your first trademark can be one of the most important moments in the life of a small business owner. When you first register your brand’s unique mark and name with the U.S. Patent and Trademark Office (USPTO), you gain numerous legal protections which can help you safeguard your business in the future.
In this article, we’ll cover almost every aspect of U.S. trademark law that you need to know to help grow your small business. We’ll be breaking this information down into four broad sections: understanding the basics, planning ahead, registration, and how to protect your mark after you register it with the USPTO.
Step 1: Understand the Basics
1. What Can I Trademark
1.1. Suggestive, Arbitrary, and Fanciful Marks
1.2. Descriptive Marks
1.3. Generic Marks
2. What is Trademark Priority?
3. How Much does it Cost to Register a Trademark?
3.1. USPTO Fees
3.2. Attorney Fees
4. When can I use the Trademark Symbols?
5. Should I Hire an Attorney?
5.1. Reasons You Should Hire an Attorney
5.2. Reasons you Don’t Need an Attorney
Step 2: Plan Ahead
1. Get a Trademark Search Report
2. Research Trademark Classes
3. Should I File my Trademark on the Supplemental or Principal Register?
Step 3: Registration
Step 4: Protect and Maintain your Mark
2. Trademark Official Gazette
3. Objecting to an Infringing Trademark
A trademark is a symbol, name, or other identifying feature that makes a consumer think of a specific product, service, or brand.
When you register your trademark, you’re essentially announcing to the world that you’re laying claim to that particular mark. Because of this, you’re allowed to stop other brands from registering or using confusingly similar marks. You also gain several other legal protections, as detailed in the U.S. Code.
In this first section, we’ll cover several common questions people often have about trademarks.
You might also be interested in episode 14 of our weekly podcast Law Talk, where we discuss several trademark law basics in more detail. You can listen to the audio below.
Anything that helps consumers identify your business, products, goods, or services can be trademarked. When we think of trademarks we traditionally think of logos, slogans, and catchphrases. But literally anything that helps consumers distinguish your business from a competitor’s business can be trademarked.
Designs, images, sounds, jingles, smells, and even colors have been trademarked on the Federal Register. Further, since a 2017 Supreme Court Decision, disparaging trademarks are also now totally legal. In this way, a trademark is any type of distinctive “thing” that represents a particular product or company.
In addition to these restrictions, some things are harder to trademark than others. This is because trademarks have four levels of protection:
- Arbitrary and Fanciful
Each kind of trademark is treated differently by trademark law, and each level of mark affords different trademark protections.
You get trademark protection immediately after using a suggestive or arbitrary/fanciful mark because it automatically counts as unique.
Suggestive marks usually give a hint about a quality that describes your product. An example of a suggestive mark would be “Chicken of the Sea” brand tuna, because it suggests that the company’s product (1) is similar to chicken, but (2) actually comes from the sea.
Arbitrary and fanciful marks, on the other hand, do not suggest what the product is. In fact, by definition they have nothing to do with the product at all. For example, the “bitten apple” logo that represents Apple brand products has nothing to do with electronics.
Basically, these marks are often words and images which have no relation to your core business outside of your actual use of the mark.
If your mark is suggestive, arbitrary, or fanciful, receiving trademark protection is usually pretty easy. The difficulty comes in if your mark borders on descriptive.
Descriptive marks are a little harder to obtain trademark protection for. This is because descriptive marks are not unique by nature, so you would have to show that your mark has acquired distinctiveness over time in order to receive protection.
Many refer to this acquired distinctiveness as “secondary meaning,” because even though the mark describes something common, it has also become associated with a particular brand.
If your mark is descriptive, you must determine if it has acquired a secondary meaning in order to be placed on the Principal trademark register. For descriptive marks that have not acquired secondary meaning, you can register your mark on the Supplemental register. After five years you can then file to place your mark on the Principal register.
A generic mark is a term so broad that it identifies a huge list of products, like the word “car.” You can never get a trademark on a generic mark. Doing so would bar anyone else from using that general word in any aspect of their business.
In most cases, generic marks won’t receive trademark protection from the USPTO. A good sign that your mark is generic is if you are using the word’s dictionary definition, or the word is commonly used to refer to your product or service.
For example, if you name your small lawn mowing business “Lawn Mowers,” you generally won’t be able to register that name with the trademark office. However, you might still be able to receive protections as a common law trademark, as detailed in a later section.
Trademark priority is basically how the USPTO decides who has the right to use a given mark. Generally speaking, the first person to use a trademark in commerce has trademark priority over all later applicants.
The easiest way of gaining trademark priority is by registering your mark. Doing so successfully will give you priority over all later marks. However, remember that if a company uses a non-registered mark similar to yours before you registered, they might still hold priority in their local area.
The reason for this is that trademark priority is usually decided based on two factors:
- Time – You’ve been using the mark longer than the other person, therefore you have priority.
- Location – You have common law trademark priority in your specific location, even if the other person officially registered first elsewhere (see this Wikipedia page for a high stakes look at trademark priority involving Burger King).
It is important to note that registering for a trademark only protects the mark from all future users. If there are pre-existing users of your trademark–such as smaller or local businesses who haven’t registered or conducted business over state lines–those trademark users can continue using the mark in their given market and geographic area. This is the reason that most businesses purchase a thorough Trademark Search Report before registering their mark.
You are also required to maintain active use to keep priority of your trademark.
For a more in-depth analysis of trademark priority, check out our full article on the subject.
Depending on which path you choose, the total cost of registering a trademark can vary. In general, you should budget for anywhere between $1,000 and $3,000. This money is split between your attorney (if you choose to hire one) and fees for the USPTO.
The USPTO charges a processing fee for all trademark applications. The total costs of these fees can be seen on their website, however, they can be broken down generally as follows:
- TEAS Regular Form is $325 per class of goods/services
- TEAS Reduced Fee Form is $275 per class of goods/services
- TEAS Plus Form is $225 per class of goods/services
Though USPTO doesn’t encourage it, you may also opt for a paper application. Per international class, paper applications cost $375, which is substantially the most expensive and least efficient option.
In addition to the application costs, there are also several additional fees which tend to appear throughout the process. These can include:
Requesting Extensions – During the application process, you must file a Statement of Use within six months of the Notice of Allowance. If you decide you need to request an extension to show your trademark’s prior usage, there’s an additional charge of $150 per class of goods/services for each six-month extension.
Allegation of Usage – If you are instead filing an allegation or statement of use to prove your usage of your trademark, you must include specific dates such as when you first used the mark in commerce, one sample of use for each class, and make a payment of $100 per class.
Abandonment Status – If an application goes into abandoned status at any time during this process for whatever reason, there will be a fee of $100 in order to continue the application.
Filing a Section 8 declaration during your 5th and 6th years of registration, for example, is mandatory. This requirement results in a fee of $100 per class of goods/services.
You must also file both a Section 8 and 9 declaration during your 9th and 10th year of registration (and then every 10 years after that). If filed online, the combined application for this renewal is $400 per class of goods/services. Paper filings cost $500.
Trademark attorney fees can vary widely, but expect to pay anywhere from $250 to $450 an hour. While hourly rates are used on occasion, many trademark attorneys will offer a flat fee for trademark registration services.
That flat fee could range anywhere from a couple hundred dollars to thousands of dollars depending on the scope of your case. Expect your flat fee to be higher in complicated cases where you’re looking to register your trademark in more than one international classification.
Trademark registration attorney fees typically cover the cost of obtaining and reviewing a trademark search report, and then actually registering your trademark. In sum, expect to pay the following trademark registration costs you choose to file:
- Trademark search report = $200 – $800
- Attorney fee = $450 – $2000
- TEAS plus fee = $225 per class of goods/services
- Grand Total = $875 – $3,025 (+$225 per class of goods/services)
You may only use the ® symbol after the USPTO officially registers your mark. Using this symbol before your mark is published in the Trademark Official Gazette is actually a federal crime. However, you may use the ™ symbol as much as you like. This symbol states that you’re claiming the mark as your own, but have not yet officially registered it.
For more information on choosing between the ™ and ® symbols, check out our blog post When Should I Use the ™ Symbol Instead of ®.
If you’re more interested in the registered mark (®) specifically, you should also read our other article, Everything You Need to Know About the Circle R.
There is no rule requiring you to hire an attorney when you register a trademark, though it is often encouraged. Whether or not you should hire an attorney is really dependent on your individual case. Some of the advantages and disadvantages are outlined below.
Trademark attorneys specialize in the subject of trademark law. The best way to make sure you have the right expertise on your side is to hire a trademark attorney. Instead of working with external resources, which can often have conflicting information, a trademark attorney can offer you both experience in, and knowledge of, trademark law.
Hiring an attorney can also save you money in the long run. Simply registering your trademark can cost several hundred dollars, and if you miss deadlines additional fees may follow. Further, the filing fee is non-refundable, which means that if you mess up your application, there’s no way to get your money back. Hiring an attorney and getting it right the first time can save you money.
Another advantage of hiring an attorney is that they know the specifics of what the USPTO is looking for. For example, if you decide to register using the Reduced Fee or Plus forms, you need to meet the specific requirements for each of these forms. Otherwise, your application will be automatically denied.
Another key element of hiring an attorney is their ability to help you determine whether you should register your mark on the Principal or the Supplemental register. An attorney can help you figure out if your trademark is legally distinctive, or if it’s merely descriptive. While these terms sound like small differences, choosing the wrong one can cause an instant rejection of your application.
There are also several benefits to not hiring an attorney. While this is generally not recommended, registering a trademark by yourself is also a viable path.
The biggest reason you don’t need an attorney is that the USPTO keeps all their forms online. They also have an extensive FAQ section and several videos that answer many common questions about trademark law.
Another significant advantage of registering by yourself is saving substantial amounts of money (provided you file correctly the first time). As we mentioned earlier, the USPTO has a specific fee structure they stick to when dealing with trademark applications. They also provide an overview of all other related fees.
Lastly, if there are issues with your application the examining attorney will generally send you an Office action which describes where you went wrong. Using this action, it’s relatively simple to fix your application and resubmit it.
However, we are often contacted by clients during the office action stage. Untangling a trademark problem can sometimes be more expensive than hiring an attorney to begin with, so keep that in mind before you file.
Registering a trademark is deceptively easy. While the actual act of registering itself isn’t hard, there are several pitfalls surrounding the process that you need to look out for. Because of this, it’s important that you plan ahead to avoid common mistakes which can delay your application, or result in a total rejection of your mark.
We’ll outline three of the most important things to consider below.
The first thing any trademark attorney will recommend is getting a comprehensive trademark search report. Most good attorneys will actually do this report for you as part of their full trademark application package. However, it’s still good to understand how this report is made, as well as what kind of information this report provides.
Investigating your trademark can be a lot of work, but it is an important first step in the trademark process. Think of it as an investment in the goodwill and reputation of your company.
Doing your due diligence in this first step can save you a lot of time, money, and effort.
More practically speaking, you should search for marks “confusingly similar” to your own before applying with the USPTO. This is because your application will be reviewed by one of the USPTO examining attorneys, who are required to go through this same process.
If they find a trademark confusingly similar to the one you’re applying with, they’ll outright reject your application. In this case, you’ll lose all the time, money, and effort which went into your application.
If you fail to perform a proper search, you’re basically setting yourself up for failure. Check out our article on how to do a proper trademark search for a more in-depth explanation of this process.
For more information on how to read a report that an attorney gives you, check out this article instead.
There are 45 total international trademark classes into which all goods and services fall. These classes are managed by the Nice Classification System. If you’re unaware of what the Nice Classification System covers, check out our article on the Nice Agreement.
We’ve also created pages for each of the individual classes, listed below. They are split up between the trademark product (1-34) and trademark service (35-45) classes.
- Trademark Class 1: Chemical Goods
- Trademark Class 2: Paints
- Trademark Class 3: Perfumes and Personal Hygiene
- Trademark Class 4: Fuels, Oils, and Illuminants
- Trademark Class 5: Pharmaceutical, Medical, and Veterinary Products
- Trademark Class 6: Common Metals
- Trademark Class 7: Machines and Machine Parts
- Trademark Class 8: Hand Operated Tools
- Trademark Class 9: Electric and Scientific Apparatus
- Trademark Class 10: Medical Apparatus
- Trademark Class 11: Appliances
- Trademark Class 12: Vehicles
- Trademark Class 13: Firearms, Fireworks, and Explosives
- Trademark Class 14: Jewelry
- Trademark Class 15: Musical Instruments
- Trademark Class 16: Paper Products
- Trademark Class 17: Rubber and Plastic Products
- Trademark Class 18: Leather
- Trademark Class 19: Non-Metal Building Materials
- Trademark Class 20: Furniture
- Trademark Class 21: Household Utensils
- Trademark Class 22: Textiles and Fibers
- Trademark Class 23: Threads and Yarns
- Trademark Class 24: Textile Goods
- Trademark Class 25: Clothing
- Trademark Class 26: Cloth Finishing
- Trademark Class 27: Floor Coverings
- Trademark Class 28: Games and Sporting Goods
- Trademark Class 29: Meat, Dairy, and Nuts
- Trademark Class 30: Bread, Baking Ingredients, Coffee & Tea
- Trademark Class 31: Natural Agricultural Goods
- Trademark Class 32: Beverages
- Trademark Class 33: Alcoholic Beverages
- Trademark Class 34: Tobacco Products
- Trademark Class 35: Advertising and Business Management
- Trademark Class 36: Insurance and Financial Services
- Trademark Class 37: Repair, Installation, Construction, and Laundry Services
- Trademark Class 38: Telecommunication Services
- Trademark Class 39: Shipping and Travel Services
- Trademark Class 40: Treatment of Materials Services
- Trademark Class 41: Education and Entertainment Services
- Trademark Class 42: Science and Technology Services
- Trademark Class 43: Restaurant and Hotel Services
- Trademark Class 44: Healthcare, Beauty, and Agricultural Services
- Trademark Class 45: Personal, Social, and Security Services
The USPTO offers two different lists for trademark registration. These two lists are called the Supplemental and Principal registers. All business owners should aim for registering their trademarks on the principle register, as it offers stronger protections.
Think of the Supplemental register as a way for weaker marks to still receive formal protections while they strengthen their brand through commerce.
For an example of why this might be the case, consider the following scenario:
Bill and Joe Smith are brothers, who each want to start their own small business.
Bill’s business is named “Banana,” and he sells printers. Because Bill’s business name is arbitrary (not related to the product he’s selling), it is distinctive enough for the Principal register.
Joe, on the other hand, takes great pride in his family’s name and heritage, so he decides to start his business with his son, and wants to include his family name in the brand. He eventually settles on “Smith & Son Paper Manufacturers.” However, surname marks almost never get on the principle register on their first try, so he can’t just follow the same path as his brother. So what does he do?
Joe must instead register his trademark on the Supplemental register. While registration on the Supplemental register itself doesn’t prove distinctiveness, it can provide legal protections while you wait for the “five years” requirement dictated by the USPTO.
After five years of using his surname trademark in commerce, he can re-file for his position on the Principal register.
Basically, the Supplemental register is a formal list for trademarks that are waiting for their distinctiveness requirements to fall into place. Normally, this happens after five years on the Supplemental register while the mark is used in commerce.
Another aspect of trademark law you should understand is that trademark registration is not actually mandatory. In fact, you technically have protections under common law even if you never formally register your trademark.
However, only fully registered marks can gain the full protections offered by U.S. trademark law, sometimes referred to as “incontestability.” Registering your mark or brand name is also important because it helps you mark your territory in a particular niche. This can help you if you decide to expand your business in the future and can help prevent cases of accidental infringement by business who otherwise couldn’t find your mark in their own trademark searches.
We’ve gone over the full trademark registration process in a previous article, however, the process itself can be boiled down into four quick steps:
- Perform a Trademark Search – As we mentioned earlier, this is a crucial step in ensuring the strength of your mark. This step can also help you pick a strong trademark that is likely to become incontestable.
- File the Application – The USPTO actually offers a rather robust application page which provides several resources for first-time applicants. You should also file your application digitally, as paper applications are much more expensive.
- Receive a Response – Occasionally, you may receive a document called an “Office Action” from the USPTO attorney in charge of your application. This document will basically list a few minor errors or corrections you need to fix before they’ll accept your trademark. Sometimes an office action will have substantive complaints about your mark that may prevent you from registering. A “final” office action, however, is un-correctable, and means you’ll have to start the process from scratch.
- Publication in the Official Gazette – Every Tuesday, the USPTO puts out the newest edition of the Trademark Official Gazette. Publication in the Gazette basically means that your trademark has been officially registered.
While the most obvious step in the trademark process is the actual registration, you should spend the majority of your time protecting and maintaining the mark after it’s formal registration.
Registering your mark with the USPTO is only half the battle. You must also carefully nurture the mark for as long as you intend to use it. There are several key points you should consider when maintaining your trademark.
First, don’t forget to renew your mark. You’ll have opportunities to renew your mark between five and six years after its registration date, followed by additional 10 year renewal periods.
After your mark has been on the Principal Register for five years you can also file a Section 15 “declaration of incontestability.” Incontestability is the highest form of protection for your trademark. This is because you are given the benefit of the doubt in almost all trademark contests against other brands.
In addition to renewing your mark, you must also protect it from other businesses. You need to stay aware of other competitors in your industry and think about the names of new businesses that you become aware of.
If someone uses your mark or a confusingly similar mark to promote their own brand, that may damage your trademark. It also opens you up to legal problems.
If you know about the infringement and don’t do anything, you can end up in a significantly weaker position later on when renewing or protecting your trademark rights.
As mentioned earlier, a useful resource for any trademark holder is the USPTO’s Trademark Official Gazette. The Gazette is a publication that lists all of the newly approved trademarks from the following week.
After you and your attorney submit your trademark for registration with the USPTO, the organization will review it. If the USPTO finds that there are no clear legal reasons to deny your trademark, the USPTO will approve your trademark and publish it in the Gazette.
However, you should check the Gazette periodically even after you’ve registered your mark. The USPTO doesn’t actively search for trademark infringements, so if a confusingly similar mark appears in the Gazette it’s your responsibility to file an infringement case with the Trademark Trial and Appeal Board.
The whole point of trademark law is to protect the first person (or company) to use a distinctive mark in commerce. If you fail to regularly check the Gazette, a new company might get away with copying your brand’s logo or name for their own commercial gain.
Once another brand publishes their trademark in the Trademark Official Gazette, you have 30 days to file in opposition of their mark. If you decide to oppose the trademark, you need to hire an experienced attorney immediately.
All objections to trademarks are heard by the Trademark Trial and Appeal Board, which has its own sets of rules and precedents. However, the case will generally play out similar to a civil court hearing.
Trademark opposition hearings are a long and rigorous process. There are seven broad steps in a trademark opposition hearing you should know about:
1: File a Notice of Opposition – First, you file a notice of opposition with the Trademark Trial and Appeal Board. This is similar to a complaint in a civil case.
2: The Board Issues an Institution Order – The Trademark Trial and Appeal Board will then issue an institution order. This will inform all parties of the trial date and discovery dates. The institution order generally sets forth a deadline for the defendant’s answer.
3: The New Company Files an Answer – Then the party you are opposing will file an answer to your petition. The new company will likely deny all allegations set forth in the notice of opposition.
4: A Settlement or Discovery Conference will be Held – Then there will be a settlement conference. If the attorneys cannot work out a settlement, then they will work out a schedule for discovery.
5: Testimony Period is Held – Finally, we get to the difference between a civil action and a trademark opposition hearing. There is no live action trial in a trademark hearing. Instead there are three different periods of testimony:
- The company that submitted the new trademark will have 30 days to submit its trial evidence.
- Afterwards, the old company opposing the trademark will have 30 days to submit their evidence.
- Finally, the new company will have 15 days to rebut the evidence of the opposing company.
6: Both Parties Submit their Final Briefs – After this testimony period, both parties will submit their final briefs to the board. These briefs are crucial to the TTAB’s decision. The new company will file a brief with a maximum 60 page limit. The old company opposing the new company’s trademark will file a brief with a maximum 55 page limit. Finally, the new company has the option to issue a 15 page reply brief to the old company’s brief.
7: Trademark Trial and Appeal Board Renders Their Decision – To render their decision, the TTAB will have the testimony period and parties final briefs to rule on the case. However, in some instances either party can request an oral hearing. The oral hearing would be heard by a panel of three members from the board. The board will then make its decision. Unfortunately, it can take up to six months (or more) for the board to reach its decision.
Registering your first trademark can be an exciting process, however you should always make sure you’re doing everything by the book. While the process might look simple on paper, it can quickly end up overly complicated and expensive if things go wrong.
For this reason, it’s highly recommended that you seek the advice of an experienced trademark attorney when registering your first mark. Speaking with an attorney can help you navigate around common pitfalls, and can make the entire process much easier, and in many cases cheaper.
No matter which path you choose, you should always make sure to nurture and police your mark after you formally register it with the USPTO. If you take care of your trademarks, you’ll set your business up for greater successes and profits in the future.