Registering a trademark is an essential step to protecting your name, brand, and work. Many new business owners don’t realize that most basic trademark registrations can be done without any additional legal help. Below, you will find a step-by-step overview of the trademark application process to help you navigate your registration.
You can submit a trademark application online, using the USPTO’s online system for a trademark application, an online trademark filing service, or you can send a paper application to USPTO by post. Before the trademark application process, you want to start with a trademark search and ensure your trademark is available.
What can you register as a trademark?
Three most commonly used types of a trademark are:
Name (textual element)
Logo (graphical element)
Combined (text + logo)
Additional types of trademarks include shapes, sounds and other elements that can be used to distinguish the goods and services of a company. An example can be made of Coca-Cola’s shape of its bottle or of MGM’s lion’s roar.
At the same time, you must make sure that the trademark you are trying to register is not:
Generic (like “shoes” for a shoe business or “best ice cream” for an ice cream shop)
Descriptive (describe the goods or services it will relate to, for example, the word ‘cotton’ cannot be a trademark for a cotton textile company)
Misleading (for example, use the word ‘organic’ for goods that are not organic) Offensive (for example, containing swear words or pornographic images)
Still not sure how to choose an appropriate name for your brand? We put together a handy article Words to avoid when choosing a trademark to help you avoid any potential issues.
How much does it cost?
The USPTO charges a flat fee of either $250.00 (TEAS Plus) or $350.00 (TEAS Standard) per class of goods and services. This means that the USPTO doesn’t charge the applicant per trademark, but rather according to how many different types of goods/services the applicant intends on selling under the trademark. There is also a TEASi, which enables applicants to file international protections. If the international application is based on one basic application or one basic registration, the fee is $100 per class based on the total number of classes in the international application. These costs do not include legal (attorney) fees for tracking the application progress, responding to basic examination requests/questions and settling opposition.
Under the TEAS Plus trademark application, the trademark applicant is required to select the goods/services from a pre-set listing from the Trademark Identification Manual (TIM). Conversely, under the TEAS Standard trademark application, the trademark applicant can draft his/her own unique description of the goods services. Therefore, depending on the complexity of sold goods and services the applicant might either rely on the TIM or customize their description. The final selection of goods and services will affect the cost of a trademark.
What is the application process?
Your application process depends on the filing basis you select in your application. USPTO accepts trademark applications based on:
Use in commerce
Intent to use in commerce
Foreign trademark application
Foreign trademark registration
International registration filed through the Madrid Protocol
Each one has different requirements before the trademark can be registered. The following section will outline the process for trademark application based on Use in commerce and Intent to use in commerce.
Use in commerce
A trademark is considered to be ‘used in commerce’ with goods when:
the trademark is placed on the goods, packaging for the goods, or displays associated with the goods (including web page displays), and
the goods are actually being sold or transported in commerce in the US.
The trademark could be regarded as 'being used in commerce' as long as it is genuinely being used with particular goods and/or services defined on the trademark application.
Step 1: Submission and Examination
Your application is given a USPTO serial number. You can check the status of your application by entering the serial number in the TSDR database. If your application meets the filing requirements, it’s assigned to an examining attorney, who reviews it to determine whether federal law permits registration of your trademark.
Step 2: Publishing
If the examining attorney does not find grounds for refusing to register your trademark, and your application satisfies all legal requirements, your trademark will be approved for publication in the USPTO’s Trademark Official Gazette (TMOG). The TMOG, a weekly online publication, gives advance notice to the public that the USPTO plans to register your trademark. Within 30 days of publishing, other trademark owners may file objections. If you receive any opposition, the USPTO will notify you.
Step 3: Registration
Within about three months after your trademark is published in the Trademark Official Gazette, if no opposition was filed, USPTO registers your trademark. After your trademark is registered, you must periodically file maintenance documents and fees within specific time frames to keep the registration active.
Intent to Use
Alternatively, when the trademark is not yet being used with goods or services in commerce, the trademark application may be filed with an 'intent to use'.
Step 2: Publishing
Within two months after the trademark is published in the Trademark Official Gazette and receives no objections, the USPTO issues a Notice of Allowance (NOA). A NOA is not a final registration but means that your trademark made it through the 30-day opposition period and will be allowed to register after you timely file an acceptable Statement of Use (SOU).
Step 3: SOU Submission and Registration
If you are using the trademark in commerce on all of the goods and/or services listed in the NOA, you must submit an SOU and the required fees within six months of the NOA date to avoid abandonment. After you submit SOU and an examining attorney approves it, your trademark is officially registered.
Before the end of the first six-year period after the registration date, or within six months of the expiration of the sixth year with an additional fee, you must file a Declaration of Use or Excusable Nonuse under Section 8 and pay applicable fees. This declaration must include a verified statement that your trademark is in use in commerce, along with evidence showing that use. If you don’t file this declaration, your registration will be canceled.
The final registration success will depend on how much research you conducted before application. You must be careful to ensure you get the protection you need without going too far and putting your trademark at risk of cancellation. If you are still unsure, start with our free lawyer’s check to ensure that your trademark is registrable and the chances of receiving opposition are minimal.