9 Steps to File for Your Own Registered Trademark

Caution: Do try this at home if you are the sole owner of the name.

Do NOT try this in a corporate environment without the help and guidance of an intellectual property lawyer. There can be serious long term legal ramifications.

1 Trademarks are filed by International Class, so the first thing you need to do is find what class you would file under. Here is a summary of the classes, with links to the USPTO for more details: Intnl Classes. Notice that classes 1 – 34 are for physical goods, and 35 – 45 are for services. If you are still not sure what class to file under, look up some famous mark in your industry, and see what they have filed under. Note that they may have filed under more than one class. You can too, but you have to pay separately for each class. While you are looking at famous names in your field, notice how they have described their goods and services, you will need this later.

2 Now that you know what class is of interest to you, check carefully that the name is not already a registered trademark, by searching on the name at USPTO.gov in the TESS section. (Trademark Electronic Search Section). When prompted, a Structured Search is probably the easiest for most newcomers. When searching, try all combinations to be sure. E.g. For our own name we search on “Brighter Naming” (with the quotes for an exact phrase match), and on Brighter and Naming – Note the and… or their search assumes OR and you will get all the results that used the words Brighter or Naming anywhere in their name or filing description or application. For completeness, we search on the name as one word too, e.g. BrighterNaming as well as other close or similar names, e.g. Brighter Names, Briter Naming, Bright Naming, etc.

3 If you find your name is already in use, in the same class as you plan to file, stop. Do not proceed, even if you find an Intent to Use was filed, or the trademark has not yet been approved by an examiner. If an application was abandoned or cancelled, proceed with caution. Note that it does not always have to be an exact match. Confusingly similar is close enough – of course, for similar goods or services in the same class. But if you make shoes (25), and someone has the trademark for computers (Class 9), there is no problem (except for world famous trademarks but you already know what those are). However, if you do real estate services (Class 36) and someone has the name for Construction (Class 37) you might want to be very careful since these are very close and you have to think where you will be in a few years time. Also, regardless of what the trademarks say, will there be confusion in the marketplace when you both work in the same neighborhood?

4 At this stage you need to check some extra items. When you looked up the name, did you find your name was used a lot in the description of other marks? If yes, your application may be adjudged to be for a generic name and no one can register generic industry names. Once again within classes. So, if you make soap, you cannot trademark the name soap, else what would other people use to describe it in their industry – wax to wash your hands? However, if you look up Soap, it is a registered trademark for computer software, because in that field it is not a generic word.

5 While registered trademarks are the most powerful form of trademark protection, there are millions of people using names (and logos) that are not registered. Many of these do correctly use the TM or SM (for service mark) symbol. So you really should do a broad industry search (and business name search if applicable) to make sure no one else is already using the name – especially if they are using and promoting it widely. Note that a quick Google search is far from adequate. You need to dig a lot deeper than that. If you use a lawyer, they will insist on a professional search report or run one of their own. Else you can use other professional services (like a naming agency or I/P agency) to search properly for you. Some hits here may not be showstoppers, but anyone who can claim prior usage of the name has some legal trademark rights in the name.

6 First double check you are clear how to describe your goods or services. This is the hardest part which is why most lawyers follow the guidance of the USPTO themselves, and use their standard descriptions, or they use simple verbiage similar to that which has been approved on other trademarks already. For our own name, there is no specific simple way to say all the functions a naming agency does, so our description ended up being:

Business marketing consultation services; advertising services, namely, creating corporate brand identity, naming of corporations, products and services for others; market research services; business marketing services, namely development and implementation of marketing strategies for others; business consulting services in the fields of advertising, public relations, marketing, corporate identity development, product branding, strategic branding, brand positioning and promotion; business management services for others in the fields of creating, searching, evaluating, and managing brand names, trademarks, service marks and business name.

Wow. Don’t worry. Most are not this long. Even though we copied parts from other filings, and then the examiner assigned to check it suggested a number of modifications. Here is a better example, where the examiner was happy with the simplest of descriptions, even though the business called Safari Gold has two distinct sales areas:

Retail jewelry store and art gallery.

What is particularly interesting about this example is that so many other jewelry applications go into long-winded explanations about rings and bracelets and diamonds and stuff, not to mention catalogs, online, physical stores, etc. We prefer the broad coverage using standard terms suggested by the trademark office guidelines.

7 You need one last piece of information before filing: a copy of something showing the mark in use. This must be a 300dpi JPG image, no bigger than 8 ½ by 11. For a product, a picture of the name in use on the product is best. For a service, a copy of a business card or a picture of the building or service vehicle will suffice. (If you have not used the mark yet, then you need to wait or file an Intent to Use – but that is outside the scope of this document).

8 The rest of the filing process is easy. You logon to the USPTO’s electronic trademark application system (TEAS) and carefully answer all the questions. Since it used to be a paper system, they still call all the parts “forms”. So you are fulling in electronic forms and signing them with your email address. Apart from the above information here, all it really is going to ask you is basic owner name and address and the first date you used the trademark. Any date prior to your filing date that you can prove usage (if needed) is acceptable. The system allows for electronic signatures and takes major credit cards. Fee is currently $384 per application class (cheaper than a paper filing). It is even less if your description is a single standard one from their approved list, in which case you can file a TEAS Plus application.

9 The final step is simply to watch your email and respond to any actions they may send you (there usually is something or other). With electronic filing you will probably not get any physical paperwork at all – maybe just a post card as it goes through some steps. It is recommended that you check on its progress every few months. If there are no issues, it will eventually be approved for protest (in case someone objects, they have a 30 day window to do so), then it will be approved for publication. And about a year after you first filed (but that initial filing date is the important date), you will get a real certificate with your registration number in the mail. And then you too can embrace the power of ® and use this magic symbol on your name for a long time – as long as you pay the minor renewal fees.

PS While the links and references here are specifically to the US Federal Trademark system, the rules are pretty much the same in every country, though few others allow for electronic online filing. Canada is the only major western nation that uses an older classification system, but the concepts are the same. There is no single worldwide trademark body, though the newer EU mark will give you coverage for all EC countries.

Disclaimer: This is meant as a guide only, and should not be construed as legal advice. For more details, please consult your attorney and/or review the extensive online information provided by the USPTO.

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