Key Takeaways
- Registering a trademark in the US protects your brand identity and ensures your brand remains unique.
- The USPTO examines and approves trademark applications after you have conducted a clearance search and filed your application.
- You can register a trademark as a standard character or special form trademark to protect words, phrases, stylised designs, or logos.
- The cost of trademark registration varies. Filing fees range from $250 to $350 per class of goods or services, and maintenance fees are up to $525 per class every 10 years.
- Consulting with legal experts is recommended for professional advice on any part of the process to avoid costly mistakes.
Imagine discovering that another company in the same industry uses a similar name or logo, confusing your customers. How would that make you feel? Without a registered trademark, your options for protecting your brand are limited. Registering your trademark ensures you can safeguard your brand identity and maintain your reputation.
You can register your trademark in any country where the authorities allow trademark registration. Registering a trademark in the US gives you the edge of protecting your intellectual property in one of the world’s largest markets. The United States is the third-largest country by population and the largest economy by nominal GDP. Trademark registration in the US is an important step for businesses of all sizes and comes with several benefits, including providing you with legal protection if infringement occurs.
In this article, I’ll explain how to register a trademark in the US, offering a step-by-step approach and tips for a successful application. Whether you’re a resident entrepreneur, an established business owner, or a foreign applicant, this guide will equip you with the knowledge needed to register your trademark in the US.
Registering a Trademark in the US: Understanding the Basics
What is a trademark?
A trademark covers both goods (trademarks) and services (service marks). It identifies your goods or services and helps customers distinguish you from competitors. Trademarks are a form of intellectual property and can take the form of a word, phrase, symbol, design, or even a sound. You can use any of these elements individually or in combination.
Goods refer to the physical products customers purchase from you, while services are the activities you perform for them. A brand refers to a product or service's overall perception, reputation, and image. Understanding this distinction is important when defining your trademark’s scope.
By registering a trademark in the US, you give your brand nationwide legal protection, including safeguards against counterfeiting and fraud. However, being trademarked doesn’t mean you own exclusive rights to a particular word or phrase in a way that prevents others from using it altogether.
This is a common misconception. A trademark does not give you rights to the word or phrase. Instead, it grants you the right to control how that word or phrase is used in connection with your specific goods or services.
In the US, the United States Patent and Trademark Office (USPTO) examines and approves trademark applications.
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Registering a trademark with a US state only protects your trademark within that state. To gain protection across the US, you must register your trademark with the USPTO.
Trademark Formats and Symbols in the US
Standard character format
The standard character format protects words, letters, numbers, or combinations of these in plain characters. You are protecting the words themselves, regardless of how they are displayed.
Examples of Standard Character Format:
- Coca-Cola
- It's incredibly delicious!
- Just do it
Special form format
The special form format covers trademarks that are stylised, include designs or logos, or are in specific colours. When the style or appearance is an important part of your trademark, you can go for a special form format. When you register a trademark in this format, you specifically protect how the mark looks.
Examples of Special Form Format:
For the Coca-Cola company.
For the Nike company.
If you want to protect a design or logo, or a name or phrase with non-standard elements (such as underlining, subscripts, superscripts, emoticons, or exponents), you should also go for the special form format.
Trademarks can also include sound marks, such as jingles, boot-up tunes, or other distinctive sounds.
Using the Trademark Symbols TM, SM, and ®
- TM (Trademark): This is used for goods, even if you haven’t registered the trademark.
- SM (Service Mark): This is used for services, even if you haven’t registered the trademark.
- Once you register your trademark in the US, you can use the ® symbol.
Benefits of registering a trademark in US
- When you register or apply for a trademark in the US, the USPTO lists it in its public database. This serves as a public notice for anyone searching for similar trademarks and is concrete proof of your registration.
- Your registered trademark protects you, as the registration certificate can prove your ownership in court.
- You can also use your USPTO trademark application as a basis for securing trademark protection in foreign countries.
- You gain the right to sue anyone who infringes on your registered trademark in federal court.
- Registering a trademark in the US allows you to use the federal trademark symbol (®).
- The US Customs and Border Protection (CBP) can stop the importation of goods that infringe on your trademark when you record your registration with them.
Acceptable and Unacceptable Trademarks
When registering a trademark in the US, you must ensure it clearly and quickly identifies you as the source of your goods or services.
Strong and Acceptable trademarks
Strong trademarks are:
- Fanciful trademarks: they are invented words with no existing meaning.
- Arbitrary trademarks are real words that have no direct connection to the goods or services. An example is Apple® for computers.
- Suggestive trademarks: they hint at a quality or characteristic of the goods or services but do not exactly state it.
A strong trademark makes it easier to prevent others from using it without your permission.
Weak and Unacceptable Trademarks
Weak trademarks are difficult to protect and may not qualify for federal registration. These typically include descriptive trademarks that immediately tell consumers what the goods or services are and generic trademarks that are the everyday, common names.
You can only register descriptive trademarks if your trademark has acquired distinctiveness through extensive use over time.
Moreover, if you plan to use your trademark outside the US, check whether its translation in other languages carries any unintended or offensive meanings. This helps ensure your trademark is suitable for a global audience.
How to Register a Trademark in the US
Step 1: Determine the format of your trademark
Trademarks are registered as a standard character or a special form. A special form trademark requires you to submit a JPG version of the trademark and descriptions of it.
Step 2: Conduct a clearance search
Before you apply, conduct a USPTO trademark application search to ensure your name or design isn’t the same or too similar to existing trademarks or pending applications. The USPTO may reject your application if your trademark is likely to confuse consumers due to similarities with existing trademarks.
You can perform a search using the Trademark Electronic Search System (TESS). Here’s a checklist to guide your search:
- Identical names, phrases, and designs.
- Names that sound similar when spoken.
- Names that translate to the same meaning.
- Plural forms and words with apostrophes.
For a design trademark, use the six-digit design search code assigned to specific design elements.
Step 3: Determine scope of your trademark and filing basis
A trademark is always connected to a specific good or service. You can’t register a trademark without identifying the goods or services used. Although your trademark isn’t limited to one good or service,.
You must also know your filing basis—the legal reason for registering your trademark. The filing basis determines the requirements for your application.
Step 4: Prepare Your Application
To begin with, create an account on the USPTO website and complete the initial application using the Trademark Electronic Application System (TEAS).
You have two filing options:
- TEAS Plus: This has more requirements upfront when you submit your initial application
- TEAS Standard: This has fewer requirements upfront, but you must eventually meet all the application requirements.
Step 5: Examination Process
Once submitted, a USPTO-examining attorney reviews your application. If they find no conflicting trademarks or issues, they will approve your application for publication.
If there’s a problem, the attorney will issue an office action detailing the issues, and you will be required to respond by the deadline. Meanwhile, you will get a final office action if your response doesn't resolve the issue. Failure to respond by the deadline will lead to a rejection. You can appeal a final decision through the Trademark Trial and Appeal Board (TTAB).
Also, if you fail to respond by the deadline, the USPTO will consider your application abandoned and notify you accordingly.
Step 6: Publication and Approval
After approval, your trademark is published online for a 30-day opposition period. If no one opposes it, your application moves forward.
If your trademark is based on use in commerce, it will proceed to registration.
You will receive a Notice of Allowance if it’s based on intent to use. You must then submit a Statement of Use to complete registration.
Step 7: Registration and Maintenance
Once registered, your registration certificate will be available in the Trademark Status and Document Retrieval (TSDR) system, and you’ll receive a link to download it. To receive a printed copy, you have to order one.
Maintaining your registration means you must:
- Continue using your trademark in interstate commerce.
- File maintenance documents and pay the required fees within the specified periods.
- Keep your contact details up to date.
Key deadlines include:
- 5th to 6th year: File your first maintenance document.
- 9th to 10th year: File a renewal application.
- Every 10 years thereafter, continue renewing your trademark.
There’s no limit to how long your trademark registration can last—as lengthy as you use it consistently and file the necessary documents.
Moreover, you can track your application status anytime via the TSDR system using the serial number provided in your filing receipt.
How Much Does Trademark Registration Cost in the US?
The cost of a USPTO trademark application and maintaining a trademark registration depends on several factors, such as the filing option you choose and the number of classes of goods or services in your application.
Additional fees may apply depending on your filing basis. You must also pay periodic maintenance fees to keep your registration active.
Application Filing Fees
- TEAS Plus: $250 for each class of goods or services
- TEAS Standard: $350 for each class of goods or services
If you file a TEAS Standard initial application, you will pay $350 per class of goods or services. For example, if your application covers two classes of goods, you will pay $700. However, if multiple goods fall within the same class, you will only pay $350 since you are filing for one class.
Maintenance and Renewal Fees
To keep your trademark registration active, submit a declaration of use (or excusable non-use) and a renewal application every ten years. The filing fee is $525 per class of goods or services. For instance, if your registration covers two classes of goods, you will pay $1,050.
Additionally, if you hire an attorney, your application fees will remain the same, but your overall costs of filing a trademark application will be higher because you'll also have to cover the cost of your attorney’s services
Can a Foreigner Register a Trademark in the US?
The USPTO allows individuals and businesses from outside the US to protect their trademarks within the country. However, you must hire a US licensed attorney to represent you. Then, you follow the same registration process as a US-based applicant.
Moreover, if you already have a trademark registered in your home country, you can use treaties like the Madrid Protocol to file for trademark protection in the US. This international treaty allows you to file a single application extending to over 100 member countries, provided you meet each country’s legal requirements.
While the Madrid Protocol simplifies the application process, it doesn’t guarantee registration in every country. Each country’s trademark office will review your application and decide whether to approve your trademark registration.
Tips to avoid processing delays with your trademark filings
- If you're filing using TEAS Standard, use identifications from the ID Manual to ensure consistency and accuracy.
- Respond to formal communications, such as office actions, as quickly as possible.
- Address all issues raised in office actions and avoid including unnecessary explanation.
- For routine issues that can be resolved quickly, contact your assigned examining attorney with clear instructions on the changes you'd like to make.
Common Questions About Trademark Registration
How long does trademark registration take?
Many factors affect how long it takes to register a trademark, and the USPTO may refuse your application for various legal reasons. Typically, the process takes between 12 and 18 months.
Can I register a trademark myself?
You do not always need an attorney to represent you before the USPTO. If you are a foreign applicant, you must have a US licensed attorney represent you. However, you can file the application yourself if you are domiciled in the United States.
What is the difference between a trademark and a registered trademark?
A trademark just indicates that you are claiming ownership of a brand identity. This is a common law trademark, and you can use it without formal registration. However, your rights are limited and can be difficult to enforce.
A registered trademark is granted by the USPTO and offers comprehensive legal protection. You gain nationwide rights, legal protection, and proof of ownership.
How do I oppose the registration of a similar trademark?
You can file a Notice of Opposition with the USPTO to do this.
Conclusion
Registering a trademark in the US is important for protecting your brand and ensuring exclusive rights to your business identity. The process involves selecting the appropriate application type, filing with the USPTO, and paying the relevant fees. To keep your trademark active, you must continue paying renewal and maintenance fees as and when due.
Importantly, consult with legal experts if you’re unsure about any part of the process to help you avoid costly mistakes.
