Patent Attorney and Founder
There are a lot of steps in the trademark process, the most exciting being filling out the application. But to increase your chances of having your trademark application approved, there is legwork that needs to be done before you complete the application.
In this article, we’ll break down the process, step by step.
Trademarks have two criteria, distinctiveness and use in commerce. If you can prove both, you can likely receive approval. The trademark process centers not on how to complete the application but on providing evidence to support your trademark.
The Trademark Process, Step by Step
The first step in the US trademark process is to determine whether you want a state or federal-level trademark. A state trademark only supports you for commerce within a specific area. A federal one covers all US states and territories. Federal trademarks will only be granted for businesses doing interstate commerce, so if you only have customers within a single state, you’re not eligible.
If you sell your products or offer services online and are working with or seeking clients out of state, you are doing business interstate.
Once you’ve decided which type of trademark you’re applying for, there are five steps to obtaining your trademark.
#1: Create a unique name
Many people begin researching the trademark process step by step when they already have a name picked out. There’s no problem with that. However, it’s still essential to visit this step so you can assess the distinctiveness of your trademark and ensure it will be approved. That’s defined by a scale you can use to evaluate your term.
| Fanciful | Arbitrary | Suggestive | Merely Descriptive | Generic |
|---|---|---|---|---|
| A made-up word specifically for that product. | An existing word that has no connection to the product or service. | An existing word that has no connection to the product or service. | The word is regularly used in the product or service industry. | A common word for the product or service. |
| Trademarkable | Non-Trademarkable | |||
If your word or phrase falls into the first three sections, you’ve met the distinctiveness requirement. However, if it falls into the other two, it’s likely to receive a rejection from the US trademark examiner and will require rethinking.
If you’re still coming up with an idea, it’s most cost-effective to target something suggestive. Both fanciful and arbitrary trademarks, while they can make for stronger marks, can be expensive because you have to create brand recognition. Suggestive trademarks allude to what your product is, making it easier to gain name recognition.
#2: Complete a search
You need to do a trademark search so you can ensure no one in your industry is using the same term as you. “In your industry” is key here. If they’re in a completely different line of business, then you’re probably okay. Many classes of services are products are related and care should be given to which classes should be searched. For example, if you are opening an apparel line you must look in the apparel category as well as jewelry and online/retail store services.
You can search for trademarked terms using the United States Patent and Trademark Office website. That will show you any identical trademarks, as well as their status, such as if they’re expired. Completing an identical USPTO search doesn’t guarantee you’ll receive a trademark even after you clear this database, it’s a good starting point for approval. In trademark terms, this is referred to as a “knockout search.” Searching the USPTO is an acquired skill. Before filing you should search for any wording or creative spellings as well as any synonyms or antonyms. Any of the above will cause potential issues.
#3: Use it in commerce
You must prove use of your trademark in the sale of your product in some way for approval. That could include stamping your name on your product, using it in marketing materials, or putting it on your packaging. The point is that you have to show a good faith effort to use the mark in product sales. You can’t just use it once to obtain a trademark.
But what if you haven’t started using it yet? For that, you can file an intent-to-use application. This essentially saves your place in the USPTO’s approval queue as you establish your product or service’s use in commerce.
To obtain approval on this basis, you must submit a sworn statement indicating in good faith that you intend to use the trademark in the future, and you must follow that up with actual evidence of use within 18 months. Remember that if someone else files an application for the same thing later, but claims to have used it earlier in commerce, their application would take priority over yours.
#4: Complete the application
You can complete a trademark application online using the Trademark Electronic Application System. The system offers two options: TEAS Plus and TEAS Standard. The TEAS Plus system offers lower filing fees, though there will be more legwork at the initial application in exchange for those lower fees.
The TEAS Standard system comes with higher fees, but there’s a bit more flexibility in submitting information. This may be a better choice for self-filers who aren’t familiar with all the specific criteria needed for their application.
#5: Follow up
You should regularly review the status of your trademark using the Trademark Status & Document Retrieval system. If there are issues with your application, they will be documented there so you can follow up on them. If you fail to follow up, your application may be deemed abandoned, and you’ll have to start all over.
One good way to streamline all these steps is to work with an attorney in filing your trademark. As a business owner, you’re likely going to need to trademark more assets in the future. Establishing a working relationship with a good attorney now is the best course of action.
Working with an Attorney to Speed Results
An attorney will likely help you reach trademark approval faster by streamlining the above steps. They can guide you on the barriers to your application and help you overcome them. While they may be more expensive upfront, you’ll save money in the long run by working with someone who can eliminate your risk of denial.
The trademark process step by step doesn’t seem difficult at first glance, but you have to remember there are many nuances to navigate it successfully. An examiner may find your mark is generic or didn’t meet the use-in-commerce requirement and issue a denial, resulting in a challenging appeals process. Working with an attorney is the best way to protect your intellectual property.
Bold Patents offers a more detailed step-by-step trademark process that helps streamline your application and increase your chance of initial acceptance. To talk to a trademark attorney, call 800-849-1913 or contact us.