How to get something trademarked?
As a trademark attorney, clients ask me all the time about the trademark process and how to get something trademarked. In this article, I’ll discuss the main steps and why you should probably hire a lawyer to help you.
What is a trademark?
A trademark is, essentially, a brand. It’s a word, slogan, or image that identifies the source of goods or services.
Here’s an example: you walk into a grocery store, and see a bottle that has the words “Coca-Cola” written on them. Because those words signify a brand, and identify to you that the source of that bottle is the Coca-Cola Bottling Company, they act as a trademark.
This is important, because the law wants to protect consumers from buying goods and services that aren’t what they expected. Imagine you buy something with the Coca-Cola logo, but when you drink it, it tastes like Dr. Pepper. That’s a problem that trademark law seeks to avoid.
You acquire trademark rights by using a trademark in commerce. Usually, this means using the trademark in connection with selling goods or services to the public.
Even though you have rights just by virtue of selling your product, there isn’t a lot you can do with it. To truly exercise your rights, the best thing to do is register that trademark. For something as valuable as your brand, it’s worth doing it, and doing it right.
How to get something trademarked – three steps
Step One – Clearance
The first step to take in getting something trademarked is arguably the most important. This is the clearance search.
There are actually a bunch of smaller steps that make up the clearance search. These are:
- Brainstorming brand names, if you haven’t done it yet
- Knock-out search, where you eliminate obviously weak or conflicted trademarks (see my post on trademark strength here)
- Running a search of the USPTO database for conflicts
- Searching Google and product/service-specific search engines for conflicts (for instance, as a game lawyer, I usually search the mobile app stores and pc game marketplaces for conflicting trademarks)
- Checking the EU and any other country specific search engines for international conflicts
Depending on the goods or services you’re using the trademark for, you may need to search various classes of goods. Basically, you’re looking for a clear search in goods and services that are similar to your own. Things that are very different, like Delta Airlines and Delta Faucets, can co-exist, however.
This conflict analysis and clearance search can be difficult to do correctly, and deciding whether there’s a conflict is more of an art than a science. That’s reason one for hiring someone to take care of this for you.
Step Two – Filing
Once you’ve cleared the trademark as having no obvious conflicts, the next step is filing the trademark on the USPTO’s TEAS site. TEAS gives you a number of options for various types of filings – we’re looking for the TEAS Plus form for the cheapest trademark registration option.
There are a few requirements for using TEAS Plus (otherwise you need to use the more expensive TEAS Reduced Fee Form):
- Communicate by email
- Make all filings online
- Select descriptors of goods and services from a pre-populated catalog
- Pay the full, non-refundable filing fee up front
The trademark application process is deceptively complicated. You may need to address a number of nuances (such as when you need to provide additional information, etc.), even though the application seems simple.
There is also the question of whether the trademark is currently in use, or if you have a bona fide intent to use the trademark. The
intent to use (1B) application allows you to “reserve” your trademark rights while you’re still preparing or developing the goods and services. This can be extremely handy in avoiding someone coming in and stealing your mark during the time that you don’t yet have any rights.
Additionally, it’s important that you describe the goods and services as broadly as possible, while still remaining true to their actual use (or intent to use). As with the clearance search, this can be more of an art than a science. There are a number of descriptors which can be chosen from. One handy tip is to find a competitor’s (or more than one, if possible) trademark application and review their description of goods and services. You may be able to just use the same, and add and subtract where you differ from that competitor.
Step Three – The Long Wait
The long wait for trademark registration begins after the application is filed, signed, and the appropriate fee is paid. The timeline from the date of application is basically this:
- The application is assigned to a trademark office examiner in 2-3 months
- A few days for the initial review of the application
- Assuming there are no issues that need addressing, in a few weeks the application will be published for opposition.
- This is a process that allows others to publicly view the application and file an opposition to its registration. Once published, it will be out there for 30 days.
- Once that 30 days is up, and if no one filed an opposition, the application will be approved for registration. It takes a while (weeks to months) for that to happen and the registration certificate to issue.
In all, the process can take around 9-12 months. Luckily, your rights begin on your date of first use in commerce or on the date of the application (in the case of an intent to use application).
If there are any issues with the filing (issues with filling out the forms, the description of goods, the specimen showing proof of use, or a conflict that the examiner finds, for example), this can elongate the timeline. It will also require that you answer and often amend the application to correct the errors.
For substantive refusals, this can require some legal argumentation. In all cases, I recommend having an attorney represent you. This can ensure that you’re putting your best argument forward and not limiting your rights.
In general, I recommend that you hire an attorney to conduct the clearance search, file the application, and communicate with the examiner throughout the process. This can avoid unnecessary delays, refusals for ineffective substantive arguments, and fatal errors in the application. Don’t take this lightly – by not filing the trademark correctly, you can seriously damage your trademark rights.
Many attorneys, like myself, offer flat fee services for trademark applications. These include representation throughout the whole process, from clearance to registration.
In my practice, I work with many clients who attempted to file their trademark registration by themselves and made many mistakes along the way. You may be able to correct some of these, but more often than not, the mistakes cannot be fixed. Rather than learning how to get something trademarked by yourself, save some time and contact an experienced trademark lawyer to get started.
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