Registering a trademark with the USPTO is no easy task. A lot of legalities have to be taken into consideration. That is why it is always better to leave this strenuous task to trademark attorneys AKA the experts. Nonetheless, if this is not an alternative for you, here is a quick, simple, and basic overview of the process. This is by no means comprehensive but will give you an idea of where to start.
Choosing a mark to register
The first thing you need to do is choose a mark to register. This can be a name, logo, slogan, color mark, smell mark, etc. The more creative the better. Take into consideration that the USPTO has a guide of what can or cannot be registered. For example, generic marks cannot be registered. An example of this will be like registering Apple for a brand of apples. Nonetheless, arbitrary marks can be registered. That is why even though you can’t register Apple for a brand of apples you can for computers, and that is why Apple® is a registered mark. This is your chance to be creative. To do something completely unexpected and new, so DO IT!!! Try to stay away from names which are complicated to register, and generic and descriptive marks which can’t be registered.
Strong trademarks based on the USPTO
The USPTO lists the type of trademarks which are the strongest and more likely to be registered. It lists:
Fanciful trademarks which are invented words. Basically, invented words like for example, Exxon® or Pepsi®.
Arbitrary trademarks which are actual words that have no association with the underlying goods or services as the example of Apple® already explained.
Suggestive trademarks which are words that suggest some quality of the goods or services, but don’t state that quality of the goods or services outright. An example is Coppertone® for sun-tanning products. The trademark gives the impression that using Coppertone® suntan oil will make your skin shimmer like copper.
Remember that the USPTO evaluates the marks on a degree scale in which the strongest marks are the fanciful and the weakest is the non-registrable generic marks.
Clear the mark for use
This is the most important part of the mark selection. You need to clear it for use. This means making sure that the mark is not already out there in use in relation to the goods and/or services for which you want to register it. Try to not limit yourself to a preliminary "knockout" search on the USPTO search engine TESS. Do an extensive search including federal, state, and common law trademarks in social media platforms, domain names, state records, business databases, and others. If your proposed mark is in use, change it. This will save you thousands of dollars in marketing and legal fees which you could encounter down the road by needing to change your mark or answer to legal claims.
Finally, file application with USPTO
Go to the USPTO website and file your mark. Remember to identify correctly the goods and services in relation to the mark. Follow the ID Manual of goods and services classes in the USPTO database, pay the correct fees, and finally, sign.
Registration filed, now what?
Wait for USPTO's response. Be patient. It takes various months. You should check the status of the application every 3 months at http://tsdr.uspto.gov.
I hope this is helpful but remember there are professionals that have years of experience and navigate daily during the process of trademark registration. Consider hiring them to save grievances by mistakes made when incorrectly filing the trademark registration.
Disclaimer: The contents and information provided through this blog is intended to convey general information only and not to provide legal advice or opinion.
“Everyone wants to be successful until they see what it actually takes.”