The U.S. Patent and Trademark Office (USPTO) makes applying for a trademark relatively straightforward. The guidelines included below mirror those suggested on the USPTO website. Keep in mind when applying for a trademark that there is a difference between a unique combination of letters and numbers, such as Nike, and registering a design element, such as the Nike logo.
Review and familiarize yourself with the trademark rules and guidelines. USPTO offers booklets on “Basic Facts About Trademarks” and an extensive FAQ section on their website. Detailed information about specific rules is available in the Trademark Manual of Examining Procedures (TMEP). Ask yourself whether or not a trademark is the protection that will be best for your situation. Is the mark currently used in commerce, or is there merely intent to use the mark in commerce?
Check the USPTO database for prior trademarks. You don’t want to waste time filing an application if someone else has already registered your mark. The USPTO has an online search tool, Trademark Electronic Search System (TESS), which warns that if your mark includes a design element, you will need to have the appropriate design code when performing a search. This design code “codifies design figurative elements into categories, divisions and section” and a database of codes can be found on the USPTO’s website. To learn more about a possibly similar mark, you can view the status of the application in the USPTO’s database, Trademark Applications and Registrations Retrieval.
Identify the goods and/or services that will use your mark. The trademark requires that you draft a statement meant to identify the goods and/or services that are using or will use the mark. The USPTO offers guidance on the level of specificity required when identifying the goods and/or services.
Create and depict the actual mark. There are two acceptable forms for presenting your mark: (1) stylized (design) format, or (2) standard character format. Note the operative “or” in that statement. You cannot submit a mark that combines these two. The standard character format registers a unique combination of letters, words, and/or numbers. The stylized trademark is a series of letters, words or numbers represented in a specifically styled way, or a design element.
Complete and combine your application materials and submit them. The best method to transmit your application is online through the USPTO website, www.uspto.gov/teas/e-TEAS/index.html. Fees may be paid via electronic transfer or credit card. Electronic applications are processed more quickly than regular mail applications, and you immediately receive your serial number. If you choose to submit your application via regular mail, you can expect to receive a filing receipt and your serial number within two to three weeks of mailing your application.
Follow up on your application. Expect to wait five to six months before receiving word from the USPTO regarding the status of your application. However, if complications arise trademark applications can take up to a year if not multiple years.
- The USPTO has limitations regarding what can be registered as a trademark. You will not be provided registration for a “name or visual depiction that represents or disparages a person, institution, national symbol, or belief. Neither can your name suggest anything immoral or scandalous.” More information is available online at www.uspto.gov/FAQ/trademarks.jsp#Application011.
- There are three basic trademark indicators. “TM” or “SM” are used to put the public on notice that you are asserting rights over the mark. You may only use ® after the USPTO has registered the mark; you may not use this indicator when your application is pending.
- Legitimate use of a mark can establish your right to the mark without formal registration. However, registration offers a number of benefits. These can be reviewed online on the USPTO website, www.uspto.gov/trademarks/basics/register.jsp.
- Once you file a trademark application, you must retain the serial number your application receives when filed. This serial number must be used on all future correspondence, so make sure you have it readily available.
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