Steps to Register a Trademark
Registering a trademark involves several key steps:
Conduct a Trademark Search: Before applying, it’s crucial to search the USPTO database and Google® to ensure your desired trademark isn’t already in use or registered. This helps avoid potential conflicts and rejections.

The Trademark Registration Process

Registering a trademark involves several key steps

Catherine Cavella, ESQ.

Steps to Register a Trademark

Registering a trademark involves several key steps:

1. Conduct a Trademark Search: Before applying, it’s crucial to search the USPTO database and Google® to ensure your desired trademark isn’t already in use or registered. This helps avoid potential conflicts and rejections.
2. Prepare Your Application: Gather all necessary information, including the trademark, the goods/services it will represent, and your basis for filing (use in commerce or intent to use), and the examples (“specimens”) showing you using it as a brand for the goods and services.
3. Submit Your Application: File your application online through the USPTO’s Trademark Electronic Application System (TEAS). Be prepared to pay the filing fee, which varies depending on the number of “classes” you choose. In general, more classes equals more coverage.
4. Examination by USPTO: An examining attorney reviews your application to ensure it meets all legal requirements, is not too descriptive, and is not “confusingly similar” to a prior-filed application. They may issue an office action if there are any issues.
5. Publication for Opposition: If your application passes examination, it will be published in the USPTO’s Official Gazette. This allows others to oppose your registration if they believe it will harm their own trademark.
6. Registration: If no opposition is filed, or if any opposition is resolved in your favor, your trademark will be registered, and you’ll receive a certificate of registration.

Common Mistakes to Avoid

• Inadequate Clearance: Failing to conduct a thorough trademark search can lead to conflicts and rejections, which can cost you tens of thousands of dollars, wasted time, and damage to your reputation. Beware of any search that tells you the trademark is available simply because nothing exactly the same has been registered. 
  • Trademark clearance requires thorough searching and analysis by a human being who understands the “likelihood of confusion” standard. A trademark that is slightly different can still be a conflict, and a trademark that is exactly the same may not be a conflict. 
• Vague or Incorrect Descriptions: Be specific about the goods/services your trademark will cover; and be sure you are actually using the mark as a brand for those goods and services. 
• Incorrect Filing Basis: Ensure you choose the correct basis for filing (use in commerce vs. intent to use). 
• Ignoring Office Actions: Respond promptly and thoroughly to any office actions from the USPTO. Failure to respond will cause your application to go abandoned, causing you to lose your national priority and leaving your trademark available for someone else to register at the USPTO.

Costs Involved

The cost of registering a trademark includes:

• Filing Fees: Typically range from $250 to $350 per class of goods/services.
• Legal Fees: If you hire an attorney, expect additional costs for their services. If you value your trademarks and want to avoid expensive and damaging mistakes, be sure to hire an attorney willing to take the time to learn what you are trying to achieve, how your trademarks fit into your business vision, and what is at stake for you and your business. 
  • Avoid any attorney who relies on you to tell them what your trademark is and what goods and services you want to claim. Those are strategic decisions that should come out of a legal strategy session with you and your attorney. If your attorney does not care enough to develop a strategy to get you what you need, then you might as well do your own trademark application on Legalzoom®. 
  • Expect to invest several thousand dollars in clearing and registering each trademark. If keeping the costs down is important, look for an attorney who can help you prioritize and who is creative about finding ways to reduce costs without sacrificing strategy or legal advice. 
  • Beware of trademark mills who recommend multiple trademark registrations where one would do – many mills have flat fees per application that look low, but they recommend filing 5 marks instead of one; and many are incentivized to draft the applications as quickly as possible without any desire to reduce the chances of office actions. Starting with a “low cost” trademark mill can end up costing you significantly more than hiring a real trademark attorney – and the biggest costs are the missed opportunities and lost time.
• Maintenance Fees: After registration, there are periodic fees to maintain your trademark registration. You need to prove you are still using it after 5 years, then at the 10 year anniversary of registration, then every 10 years after that. Failure to renew your registration will result in cancellation, causing you to lose your national priority and leaving your trademark available for someone else to register at the USPTO.

Timeline

The trademark registration process can take anywhere from 10 months to 3 years, depending on various factors such as Office Actions, delays in your use of the mark as a brand for the claimed goods, conflicts with earlier-filed marks, and potential oppositions. 

• Immediate Passive Protection: Once your application is filed at the USPTO, you have U.S. priority, which means your application will block others from registering a similar mark after your filing date; and your application will show up in trademark clearance searches, which lets others know your mark is not available for them to use or register the U.S.
• The Power of Priority: Anyone adopting a similar mark after your filing date can be forced to change their mark once your trademark is registered. 

Case Study: Nike’s “Just Do It”

Nike’s “Just Do It” slogan is a prime example of a successful trademark registration. Before launching the campaign, Nike conducted a thorough trademark search to ensure the phrase was unique. They then filed for registration, specifying the slogan’s use in advertising and marketing. By following the proper steps and avoiding common mistakes, Nike secured the trademark, which has become an iconic part of their brand identity – and the value of their brand.

Example: Small Business Success

Consider a small craft brewery, “Hoppy Days Brewery,” looking to trademark its name and logo. By conducting a comprehensive search and carefully preparing their application, Hoppy Days Brewery successfully registered their trademark. This protection not only prevents other breweries from using similar branding but also enhances their brand’s credibility and market presence. 

Conclusion

Registering a trademark is a critical step in protecting your brand and ensuring its long-term success. By understanding the registration process, avoiding common mistakes, and being aware of the costs and timeline involved, you can navigate this process smoothly and effectively.

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Catherine Cavella

Since 1992, Catherine Cavella, Esq. Her focus on Trademark Law and Copyright Law for the last few decades gives her deep insights into the fundamental principles behind the rules. Catherine regularly writes about new developments in trademark law, copyright law, and internet law.

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