5 Steps to Register Your Trademark

United States Patent and Trademark Office seal (Photo credit: Wikipedia)

By Scott Pfeiffer Jun 17, 2015

It is important for entrepreneurs to protect their new business’s intellectual property – hopefully before they launch. Not all companies will have a patent, and many will not have a protectable copyright. Every small business, though, sells their product or service using a brand name, and most have a logo or tagline. These brand names, logos, and taglines are the businesses trademarks. You can protect these trademarks by registering them with the United States Patent and Trademark Office (“USPTO”). Registration will protect the trademark (no one can make you stop using the mark) and to allow you stop others from using confusingly similar names and logos to sell a competing good or service. Selecting protectable names and logos and going about protecting them by registering the trademark at the USPTO is critical. Here’s how:

1. Conduct a Trademark Search: The next step is to conduct a trademark search using the USPTO Trademark Database. This search will show whether the trademarks you are considering are worth the trouble of attempting to register or whether you should go back to the drawing board. If your selected trade name is not registerable, you should carefully consider whether you want to spend the time and money to promote a brand that you cannot protect. Here are a few things to keep in mind about registerable trademarks:

Cannot be Confusing: First, your brand name must not be ‘confusingly similar’ to an already registered trademark for the same or a similar product or service. If your mark is similar to another company’s brand, and you are selling related goods or services, your trademark is weak or even not registerable.

Cannot be Merely Descriptive: Brand names that are merely descriptive or geographically descriptive are weak or unregisterable. If you sell bicycles, you can’t register the trademark “Bicycle Store”, and then hope to stop other sellers of bicycles from using that name. Misspellings of descriptive or generic wording are also likely to be rejected. 

Cannot be Deceptive: Deceptive, disparaging or offensive brand names will also be rejected.

Cannot be Someone Else: Of course, you can’t register (or use) some other person’s (or famous character’s) name or likeness without their permission.

2. Select a Good Name: The first step to protecting your trademark brand name is to select a name that can be protected. Not all brand names can be protected. More importantly, even where a brand name has been registered, it may be so weak that enforcing the registration in court would be impossible or expensive. What makes a good, strong, registerable trademark:

Suggestive Names: Suggestive names ‘suggest’ something about the good or service. “DAYTIMER” for a personal calendar is suggestive of a quality of a product without generically describing the product.

Fanciful Names: Fanciful names are made-up words with no dictionary meaning. “QUIZNOS” and “CISCO” are fanciful names. Many fanciful names are combinations of chunks of real words into a new, suggestive work – “Goodyear” or “MicroSoft”. These trademarks combine the fanciful with the suggestive.

Arbitrary Names: Arbitrary names are real words that have no association with the product or service. “APPLE” has nothing to do with computers. “BLACKBERRY” has nothing to do with cell phones. Both are real words but are used arbitrarily as strong trademarks.

3.  Determine Your Class of Goods and Services and Identify Your Goods or Services: A trademark is the brand name you use to sell a specific good or service. When you register to protect your trademark, you must select the class or classes of goods or services you are marketing with the trademark. The USPTO uses the International Schedule of Classes of Goods and Services to separate trademarks into classes. You can use your trademark to sell goods or services in more than one class, but you must pay a separate filing fee for each class in which you register. In addition to selecting a class, you must also clearly and precisely identify the specific goods or services you are selling. Examples of acceptable descriptions can be found in the Acceptable Identification of Goods and Services Manual.

4. Obtain Acceptable Proof of Use in Commerce: You cannot register your trademark until the trademark has been used to market and sell the product or service in interstate commerce. In order to register the trademark, you must submit acceptable proof of the trademark’s use. Proof of use for products shows the trademark as used on the actual product - a label, packaging, product Don’t submit advertising material, press releases, invoices, etc.. Proof of use for services shows the trademark as it is used in the sale or advertising of the services. Advertising, brochures, business cards and letterhead that refer to the services, and photographs of business signage are all acceptable for services. Note that you can file for trademark protection for your trademark before you begin to use the trademark in commerce – by filing an “Intent to Use” application. An “Intent to Use” filing reserves the mark for a temporary period and must be followed up by filing a separate proof of use before the reservation period expires. Only after the proof of use is filed and accepted is your trademark registered.

5. File for Registration: You file your application to register the trademark online here, at the USPTO. Federal registration of your trademark gives you several advantages:

Notice: Registration provides notice of your claim to the trademark. Not only is this notice important in legal proceedings, it also may prevent others from even attempting to use a similar trademark because they will find your trademark when they search the USPTO database.

Presumption: Registration gives you the advantage of a legal presumption of ownership, nationwide. If you do get into a dispute, your registration gives you the upper hand.

Right to Use: You also get the exclusive right to use the trademark on or in connection with the goods/services listed in the registration. Not only can others not stop you using your registered trademark, you can use the power of the federal courts to stop others from infringing on your trademark.
Customs: You can register your mark with US Customs to prevent infringing products from being imported.

Consider a Trademark Lawyer: You are not required to use a lawyer to file your trademark application, but it’s a good idea. There are many nuances to the registration process, from determining whether your name is registerable to properly identifying the class, good and service and writing an identification that will protect you. Dealing with the Trademark Examiner and their almost inevitable concerns and changes can also be tricky. An experienced trademark lawyer is usually money well spent. The lawyer can also help you navigate licensing and enforcement issues once the trademark has been issued.

What happens next? A month or so after you have applied for registration, you will receive an Office Action telling you what changes need to be made to your application. Maybe the description of goods and services needs to be tweaked. Maybe some portion of your tradename is too generic and needs to be properly disclaimed. Maybe your electronic logo is not acceptable, or your proof of use is not good enough. Whatever – there’s usually something. You will have a month or two to respond, and if you fix the problem (or if there was not problem – good for you), the USPTO will publish the trademark in the Official Gazette. There is a 30-day opposition period after publication, during which time anyone who believes registration would harm them can oppose registration. If no one opposes your registration, you are registered. You get a lovely certificate for your Intellectual Property Portfolio, and you can begin to use the ® with your trademark. From there, you will need to file renewal statements at the six-year point and the ten-year point, and every ten years after that, showing you’re still using the trademark.

Few things are worse than pouring time and money into building your small business brand into something valuable and recognizable, only to get a cease and desist letter from a lawyer telling you your trade name in infringing on their client’s trademark and you have to change your name. Don’t let that happen to you – spend the time and money to register your trademarks before you market them.

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For additional information regarding Florida business sales, acquisitions and valuations, please contact Eric J. Gall at Eric@EdisonAvenue.com or 239.738.6227. Also, visit our Edison Avenue website at www.EdisonAvenue.com or my personal website at www.BuySellFLbiz.com.