In this guide, you'll learn...
- The basics of trademark protection
- The importance of registering your trademark with the USPTO
- The steps involved in registering your trademarks
- What you should expect
Do you want to protect your trademark and brand? Do you want to learn more about how to register your trademark and to make sure you’re doing it right?
In this guide, you’ll learn the basics of trademark protection, the importance of registering your trademark with the United States Patent and Trademark Office (“USPTO”), the steps involved, and what you should expect.
What is a Trademark?
A trademark can be the name of your business, a logo that you use to identify your business, or both. More specifically, a trademark is a word, logo, or combined word and logo that identifies your business to the public and your customers. Most commonly, your trademark will be the name of your business and the logo that you use to represent and identify your business.
As a business owner, protecting your trademarks is a critical task and the best way to do this is through registration with the United States Patent and Trademark Office (the “USPTO”). Not every USPTO trademark registration is as valuable as the other, and how you apply for trademark registration and the classifications that you use is as important as obtaining registration. Below we outline important information that you will need to know, including the different types of trademarks, the registration process, and how to protect your marks.
What Are the Different Types of Trademarks?
A trademark may be a “word mark” such as the name of your business, a “logo mark” such as the image that you use to represent your business, or a “combined word and logo mark” that is the name of your business combined with your logo. Word marks are not limited to the name of your business but may also include unique terms that you use in association with your business. Also, colors may be trademarked as part of your overall logo and, in certain instances, as a part of your business. A good example of a color that is trademarked is the blue color used by Tiffany & Co on its boxes.
Using the famous Nike® trademarks as an example, we break down the word mark, logo, and combined mark:
Nike Just Do It
How Is a Trademark Protected?
Trademark protection comes in two different forms. One form of protection occurs passively through your use of a trademark, and the other form of protection requires active measures on your part through USPTO trademark registration.
Below, we summarize the two different forms of trademark protection:
- Common-Law Trademark Protection
When you use your trademark in commerce (i.e., you use it to identify and represent your business), you may automatically acquire “common-law trademark rights.” Under the law, if you were the first business to use your trademark within a particular geographic area, then by operation of law your rights to the trademark will be viewed as superior to those of a competitor who may come along later.
The advantage of common-law trademark protection is that it happens automatically. The disadvantage of common-law trademark protection is that it is extremely limited in both geography (i.e., the specific area where you conduct your business) and legal protections (i.e., in the types of legal actions that you may take in stopping competitors from using your trademark).
- USPTO Registration Protection
Registration of your trademark with the USPTO will afford your trademark the strongest form of protection. USPTO registration means that a formal trademark registration application has been filed with the USPTO and that an examining attorney at the USPTO has reviewed your trademark registration and granted registration. The advantage of USPTO registration is that your trademark will be afforded nationwide protection (i.e., no matter your location and where you operate, your competitors will be prohibited from adopting or copying your trademark). From a legal protection standpoint, there is no disadvantage to USPTO trademark registration.
Whether your business is operated locally, is national, or is a franchise system, USPTO trademark registration is a necessary to protect your brand. Relying on common-law trademark protection alone is not a viable option.
What Symbol Should I Use with My Trademark to Let Everyone Know It’s Protected?
™ vs. ®
If your trademark has not yet been registered with the USPTO, you should use the ™ symbol with your trademark. By using the ™ symbol, you are signifying to others that you are claiming common-law rights to your trademark. Once your trademark is registered with the USPTO, you should be using the ® symbol, which signifies that your trademark is registered with the USPTO.
Using the ™ and ® symbols are an important part of protecting your trademark, and inform the public of your legal rights, creating legal consequences if they disregard them.
What Are the Steps to Obtaining USPTO Trademark Registration?
Obtaining USPTO trademark registration involves a filing, review, and publication process. Although the trademark registration process – from date of application to date of registration – typically takes 12 months, if you are working with an experienced lawyer, the process itself is quite streamlined and cost-effective. The steps involved in USPTO trademark registration include:
1. Review of Your Trademarks
Initially, your attorney will review the trademarks that you currently use. These marks, typically, will be comprised of the name of your business (your word mark) and your logo. Information that your attorney will ask for during the initial review of your trademarks include:
- Your First Use
The date that you first used your trademark in commerce. This is typically the date that you started your business (assuming that you are using the same name now as you did when you started your business) and when you first used your logo. Your date of first use is important and has legal consequences.
- Your Products and Services
The products that your business sells or produces and/or the services that your business provides. This is important because when applying for USPTO trademark registration, your application and your trademark protection will be specific to your industry and the types of products and/or services that your business provides. For example, if your company provides HVAC and plumbing service, even though your word mark is granted USPTO protection, it is entirely possible that a business in a completely different industry, i.e., a restaurant, may be granted USPTO registration for an identical word mark.
As a part of your USPTO trademark application, your attorney will need to submit samples showing how you use your trademarks in commerce, i.e., images of your branded vehicles, uniforms, website, etc.
2. Preliminary Knockout Search
The biggest obstacle to obtaining USPTO registration is the existence of a competing trademark or logo that has already been registered with the USPTO. If a competing business or a business within a similar industry to yours has obtained or filed for USPTO registration before you, chances are that your registration application will be rejected. So, prior to filing your trademark registration, your lawyer will conduct a preliminary trademark search commonly called a knockout search. If an identical or highly similar word mark shows up in the knockout search, your lawyer should let you know. Because a knockout search is a basic search, it is possible that competing marks may not show up. So, while a knockout search is preliminary and not 100%, it’s nevertheless a cost-effective step. Your attorney can order more detailed third-party generated searches, but these searches are expensive and are usually not cost-effective.
3. Preparation of USPTO Trademark Application
Once the knockout search is complete, your attorney will prepare your USPTO registration application, which will be filed online. Important information about your application includes:
- Filing Fees:
Separate from the legal fee that you will be paying your attorney, you will also be required to pay a filing fee to the USPTO. The USPTO filing fee is $225 per trademark application, per class. Consider that in most instances you will be filing two trademark applications. One application for your word mark (without the logo) and one application for your combined word and logo mark.
Since logos change over time, it’s important to obtain registration of your word mark by itself. If your business operates in more than one industry, i.e., you are not only a restaurant but also sell prepackaged food distributed through stores, then you will be required to file for two classifications, which means the USPTO filing fee would be $550 ($225 x 2 classes) for each trademark.
4. Appointment of an Examining Attorney
Once your USPTO trademark application is filed, the next step relates to the USPTO’s appointment of an examining attorney, which typically takes four months. Once appointed, the examining attorney will review your trademark application and make a determination as to whether or not he or she will approve your trademarks for registration. The primary responsibility of the examining attorney relates to:
- Determining whether or not your trademark meets the legal criteria for registration. Trademarks that are “descriptive” (i.e., your business name is just a description of your business, such as “Healthy Food Restaurant” for a restaurant or “Prompt Plumbing” for a plumbing service) are not afforded legal trademark protection.
- Determining whether or not there are any conflicting trademarks that are already registered or on file with the USPTO. At this stage, the examining attorney will search the USPTO database to determine if your trademark is “confusingly similar” to trademarks that have already been registered.
5. Response to Office Action Letter
Once an office action letter is issued your attorney will have 6 months to respond. Your attorneys response will depend on the reason for the examining attorney disapproval. For example, if there are conflicting marks, your attorney may cite legal arguments as to why the marks are not confusingly similar.
After the examining attorney approves your trademark application for registration (i.e., typically after your attorney overcomes objections and issues raised by the examining attorney in the office action letter), the examining attorney will schedule your trademark application to be published in the Trademark Official Gazette. This publication phase notifies the public that unless someone has an objection, your trademark will be granted registration. This Gazette is monitored, and if a company believes that your registration may be confusingly similar to their mark (even though the examining attorney did not), they may file a formal objection to your trademark registration. There are other reasons why someone may object to your trademark registration, such as if they believe your trademark is defamatory.
Once you pass the publication stage without objection, your trademark will be cleared for registration.
How Long Does It Take to Register a Trademark?
Overall, USPTO trademark registration typically occurs within 12 months of the date of your initial application. However, variables that affect this timing include whether or not the examining attorney has issued an office action letter, the nature of the office action letter, and the timing of your attorney’s response to the office action letter.
How Long Does USPTO Trademark Protection Last?
USPTO trademark registration can last for an indefinite period. However, to maintain your USPTO trademark registration, you will be required to make periodic filings with the USPTO, and you must protect and enforce your trademark rights against other businesses.
Maintenance-type filings that must be filed with the USPTO to maintain your trademark registration include:
- Declaration of Continued Use (Section 8 Declaration) - A declaration of continued use must be filed with the USPTO before the end of the sixth year following the registration of your trademark; and
- Combined Declaration of Continued Use and Renewal (Section 8 and Section 9 Declarations) - A combined Section 8 and Section 9 declaration of continued use of your trademark and application for renewal must be filed before the end of every 10-year period following the trademark registration date.
What Happens If Another Business Is Using My Trademark?
If another business has copied your trademark or is using a word mark or logo that is confusingly similar to yours, you may have a claim for trademark infringement. If you have obtained USPTO trademark registration, you will have stronger rights than if you just have a common-law trademark. The next step would be to send a cease-and-desist notice where you inform the other business of your claim and demand that they stop using the similar trademarks. Since there are many variables involved, it’s important to first speak with a trademark lawyer. Factors that will be relevant in whether or not you should send a cease-and-desist notice include:
- Whether or not your trademark is registered with the USPTO;
- Where the competing business is located; i.e., are they operating in your market, or another part of the country?;
- Whether or not the competing business obtained USPTO registration;
- When the competing business first adopted its use of the disputed trademark; i.e., did they adopt and start using the trademarks before you?;
- Whether or not you have received notice that customers or potential customers are confused; and
- Is the trademark used by the competing business identical or confusingly similar to your trademark?
Do I Need to Register My Trademark to Franchise My Business?
Technically, you are not required to have a registered trademark to franchise your business. From a practical and legal standpoint, registering your trademark before or as a part of the franchise development process is highly recommended. When you franchise, a primary right that you will be granting to franchisees is the license to use your trademark. Without USPTO trademark registration, your franchisees may be exposed to third-party claims of trademark infringement, and you may be unable to protect your brand. If, at the time of launching your franchise, your trademark is not yet registered but your USPTO application is pending, there is specific language that must be disclosed in your FDD. Learn more about The Role of Your Trademarks in Franchising.
For additional information about trademark registrations, the registration process, and how to maintain your trademark, the USPTO publishes a helpful trademark registration guide.