How to Register a Trademark

A trademark is a word, phrase, logo or other identifier that distinguishes your goods or services from others. You gain some rights by using a mark, but federal registration adds important benefits.

Benefits of federal registration

• Nationwide presumption of ownership and exclusive right to use the mark for the registered goods or services
• Use of the ® symbol
• The ability to sue in federal court and seek enhanced remedies
• Recording with US Customs to block counterfeit imports
• A basis for registration in other countries

Step 1: Choose a strong mark

Invented or arbitrary words (like a made-up brand name) are strongest. Descriptive terms are hard to register, and generic terms cannot be registered.

Step 2: Search

Search the USPTO database, state registrations, domain names and the marketplace for similar marks used for related goods or services. A likelihood of confusion with an existing mark is a common reason for refusal.

Step 3: Identify goods, services and classes

Goods and services are grouped into international classes. Each class requires a separate fee. Use clear descriptions, ideally from the USPTO's ID Manual.

Step 4: File

Applications are filed online and require (15 U.S.C. 1051):

• The owner's name and address, and the mark
• The goods or services
• A filing basis: use in commerce (with a specimen showing the mark in use) or intent to use
• The fee: the base application fee is $350 per class, with surcharges for things like free-form descriptions or insufficient information (USPTO fee information)

Applicants domiciled outside the US must use a US-licensed attorney.

Step 5: Examination

An examining attorney reviews the application, often months after filing, and may issue an office action. You typically have a set period to respond.

Step 6: Publication and opposition

Approved marks are published in the Official Gazette, and third parties have 30 days to oppose or request an extension.

Step 7: Registration

Use-based applications then register. Intent-to-use applications receive a notice of allowance and must file a statement of use with a specimen before registering.

Keeping it

File a declaration of use between the 5th and 6th years after registration and renew every 10 years (15 U.S.C. 1058). Police your mark against infringers; see trademark infringement.

Watch for scams

Private companies send official-looking letters demanding fees; the USPTO warns applicants about them.

An IP lawyer can run a clearance search and handle office actions.

Sources

1. USPTO: Trademark basics
2. USPTO: Trademark fee information
3. Cornell Law School LII: 15 U.S.C. 1051, Application for registration
4. Cornell Law School LII: 15 U.S.C. 1058, Duration, affidavits and fees