Trademarks - Filing to Protect Your Brand
Updated: Nov 19, 2022
Applying for trademark protection can be done entirely online. At the time of publication of this post, the application fee is $250 for each class of goods/services using the Trademark Electronic Application System (TEAS) Plus online filing system. The USPTO application fee is non-refundable. So, filing an accurate application for a distinct mark is important.
Before registering your trademark, you must thoroughly research the USPTO filings, state business registrations, website domain registrations, and the internet, in general, to determine whether there are any existing similar business names or logos. Without conducting that search, you don’t know if any similar marks are already registered or in the application process. If there are, your application will be quickly denied, and you will lose the application fee. You would then need to decide on a new name or logo and start the process over again. This could be a significant problem if you have already been using the name and people in your area know you and your business by that name.
For most businesses that have a name and logo, you need to decide if you should file more than one application to protect your brand. If the name of your business is unique and significant and is contained in the logo, you might consider filing a standard character mark application for the name alone. This provides the broadest protection for your name. But if you have a distinctive logo that does not contain the business name, you may want to apply for a stylized mark for the logo as well. The cost to file doubles when filing two different types of applications. The opportunity for error also increases, especially when applying for the stylized mark for the logo.
It’s important to select the correct class of goods for your product or service. If you choose incorrectly your application will be denied with a loss of application fees. Some marks require applying for several classes of goods/services to secure the most protection. For example, a service business such as a restaurant will file under 043 for its name and logo. But if that restaurant is going to sell merchandise like hats or t-shirts, it will also need to file under 025. This application would cost $500 because there are two classes of goods. If you file two different applications, as we discussed in the preceding paragraph, the fee will double to $1000 because you filed two different application types for two classes of goods.
The application will ask your “basis” for filing. Are you currently using the name or logo in your business or intend to use it in the future? If you are currently using the name or logo, you file under the “use in commerce basis” of the Trademark Act Section 1(a). If you just came up with your awesome idea for a business and are not using the name or logo yet, you will file under the “intent-to-use basis” of Section 1(b). If you are using the mark now, you will need to provide the date the mark was used anywhere on the goods or in connection with the service and the date the mark was first used in commerce. You also need to provide a specimen of the mark in use. Proper selection of the specimen is important to an easy registration without demands from the USPTO examiner for a different specimen.
After you apply, it is reviewed by an examiner at the USPTO to determine whether it meets the standard for registration and if the owner is qualified to register the mark. Any rejections of the application by the USPTO examiner are called Office Actions. They explain why the mark was rejected and ask for clarification, changes, or additions. You are required to respond to all Office Actions within six months of the mailing date. If you do not respond promptly the application will be considered abandoned.
If the application is approved, the USPTO will notify you of the approval. Then you must maintain compliance with the standards for registration to keep the mark protected by the law. These standards include continued use of the mark in commerce and paying the ongoing registration fees at the determined milestones. The first milestone is between the 5th and 6th year of registration. You must file a Section 8 Affidavit to confirm you are still using the mark in commerce. With the Section 8 Affidavit, you can also submit a Section 15 Declaration of Incontestability. With this statement, the trademark owner claims incontestable rights in the trademark for five years. The filing of this statement makes the mark incontestable and various aspects of the registration cannot be challenged by third parties. Between the 9th and 10th year of registration, you must file a combined Section 8 and Section 9 filing. Then for each successive 10-year period, you must file a combined Section 8 and 9 filing to continue to maintain your rights in the mark.
Once you have a registered trademark, you can assert all the rights in the mark. This also gives you a basis for a future dispute of ownership over a trademark. As the trademark owner, you can enforce your rights against an infringer, whether from a customer, competitor, or another company in federal court.
The USPTO website has many valuable resources to learn more about the process and to file for trademark protection.
On its face, the application process is straightforward. However, as mentioned here, several places in the process can be tricky and if not done correctly could cost you valuable time and money. There are also important renewal forms and deadlines to keep track of after registration. Considering the important value a trademark can bring to your business, and the filing fees alone that could be lost, if not filed properly, consulting an attorney for assistance with this process could be a worthwhile investment in your business.
Trademark search and registration is a service we provide to help you proactively protect your business. For more information visit our trademark page: