When Do I Need a Trademark, and How Do I Obtain One?

If you’re filing for a trademark, you’ll become intimately familiar with the USPTO.

Our legal bot, Sandy the Squirrel, gets lots of questions about the federal trademark process, so we’ve summarized it below. We start by addressing how you can assert your rights without spending a dime. If you pursue a federal trademark on your own, it is going to cost at least $325 total (plus your time). Attorneys or online service fees to navigate the process for you can start at $200.

Common Law Trademark Rights

First, you may already have “common law” trademark rights without filing anything. These rights go to the first business to use a trademark, and extend throughout the geographic area in which the trademark is used. If you plan on staying as a relatively local or regional business for awhile, common law trademark rights can be sufficient protection for you, and you don’t have to file a thing! As you can imagine though, these rights can be hard to enforce, as there is no public record of the trademark’s use. You can do this NOW by simply adding “TM” to the end of your name. this signifies to others that you’re informally claiming the trademark. This puts others on notice that you’re claiming “common law” rights to your name and design. (This ® is the symbol you get to use if you go through the federal registration process (below) and are successful).

Federal Trademark Registration Process

I’ll first point you to the USPTO website, because it has very valuable resources and tutorials that can help walk you through this process. This PDF (from the USPTO) walks you through many of the steps we’ll outline. Finally, this webpage is the sort of homepage for all trademark-related things for the USPTO. You can find detailed information on filing fees, applications, etc.

(1) Choosing a Strong Mark

Next, when choosing your name you’ll want to choose a strong mark. Trademarks fall into four categories:

(a) Fanciful/ arbitrary: Words that are (a) made up or (e.g. Kodak) (b) utilizes a word that has a common meaning in an unrelated context (e.g. Apple for computers). These are the strongest type of trademarks and generally very enforceable against any infringingers.

(b) Suggestive: Marks suggest a quality or characteristic of goods and services. Suggestive marks require some imagination or thought to reach a conclusion as to the nature of the goods. Descriptive marks (below) allow one to reach that conclusion without such imagination, thought or perception.

  • E.g. Microsoft, Netscape, Silicon Graphics

(c) Descriptive: are devices which merely describe the services or goods on which the mark is used. If a device is merely descriptive, it is not a mark at all, since it does not serve to identify the source of the goods or services.

  • E.g. Light for portable computers, 104 KEY for keyboards

(d) Generic: Devices which actually name a product and are incapable of functioning as a trademark.

  • E.g. Bicycle for a bike shop

Examine which of the categories your name falls under. If it sits in the first two, you should have no problem securing a trademark. If it seems descriptive though, the USPTO will be reluctant to issue a TM.

(2) Trademark Searching

After choosing a mark that is fanciful, arbitrary or suggestive, you’ll head to the USPTO and use their TESS database to search existing trademarks. This video provides a pretty good intro to using TESS, because it can be a complex database to navigate. This article also provides useful information on how best to conduct multiple searches, since TESS operates using Booleans.

When searching, you’ll want to be able to narrow by the International Class of goods or services that your product falls within. You can find the list here, or search keywords here. This helps you to determine if any conflicting trademarks are in the same business as you. If you find another company with a similar name, but that is in a completely different business, you should still be able to register the mark.

Design marks can be a bit more difficult to search, but the USPTO does a great job of walking you through the process here. For example, if your design has a bird, you’ll want to go to category 03 -> and then find the code for birds. You’ll want to do this for each element of your design.

(3) Filing a Trademark Application

Next, you’ll head to the Trade Application System website to begin the filing process. The cheapest and most streamlined option is the TEAS Plus form, which requires that you fill out a (1) complete application and (2) agree to correspond only online. It costs $225, compared to the $400 for a regular application. This PDF, starting on page 12, walks you through the TEAS form. As you’ll see on the form, you’ll have to show that your mark is being used in commerce, so it is good to have an operational website, physical manifestation of your product, etc.

(4) After Filing

After filing, if the USPTO accepts your trademark, it moves to the “intent to use stage,” and is published in the Official Gazette. Parties will have a chance to object, and if no one objects to your trademark, you’ll receive a Notice of Allowance (NOA) within 12 weeks. After you’re issued the NOA, you’ll have 6 months to start using the TM in commerce and file a Statement of Use ($100 fee).

Do You Need a Lawyer?

As always, the decision is up to you and how you think your money can be best spent. For example, LegalZoom charges $220 plus the federal filing fee ($225 for the cheapest filing option). If you find an individual attorney through Avvo or a similar service, they’ll probably cite you a slightly higher flat fee (I’ve heard ~$500). Also note that the process can take awhile (1+ year), so it’s important to evaluate where your startup will be in a year. As you can see, a lot of paper work is involved and it can be helpful to have a professional.

Have any more legal questions? Sandy the Squirrel, our legal bot, can answer them instantly, or connect you with a legal researcher who can help find more information on your question in 24 hours.

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