Trademark Registration - The Basics

What is a Trademark?
  • A trademark can be any word, phrase, symbol, design, or a combination of these things that identifies goods or services.  It's how customers recognize you in the marketplace and distinguish you from your competitors  In other words, a trademark is your brand.

Trademarks That Can't be Registered
  • Generally, marks that are descriptive of the goods or services being sold
  • Generally, generic words or phrases
  • Generally, surnames
  • Generally, marks that are geographically descriptive
  • Generally, internet domain names
  • Generally, marks that are merely a decorative feature
  • Generally, marks that are too similar to an already registered trademark ("likelihood of confusion")

    • The proposed trademark can't be too similar in looks and/or too similar to the goods and services being sold with regard to a previously registered trademark.  CLICK HERE for the "Trademark Center" (to search previously filed registration applications)

The "Use in Commerce" Requirement
  • To qualify for registration a trademark must be "used in commerce" (that is, used in conjunction with actual sale of goods or services).  One or more digital images (called" specimens") must be included included in the application as proof

    • ALTERNATE:  an application can be filed on an "intent to use" basis.  Specimens are not initially required for an Intent to Use application - BUT - an "Allegation of Use" (along with the required specimens) must be filed within 6 months after the initial application has been approved along with an additional $100 fee

The Registration Process
  • Filing Fee  Trademarks are registered with the United States Patent and Trademark office (USPTO).  The filing fee can vary, but it is typically $350 for a single application for a single "class" (see below).

Description of Goods/Services (determining "class")
  • A trademark will enjoy protection ONLY when it is used in conjunction with the sale of the goods or services specifically listed in the registration application.

  • USPTO has categorized all possible types of goods and services into "classes".  The relevant classes for a particular registration application are determined by the description of the goods or services entered into the on-line registration application by the applicant.

    • In the registration application applicants must generally use one or more of the pre-approved descriptions taken from the Trademark ID Manual.  Descriptions NOT found in the Trademark ID Manual are allowed but using them will probably delay final approval and will increase the amount of the filing fee.

      • TIP:  It is very important that ALL of the goods and services that are to be protected are adequately described - therefore - before preparing the on-line registration application play around with the Trademark ID Manual entering different search terms until you find all of the preapproved descriptions that you need (make a note of the search terms that you used so that in the on-line registration application you can enter them into the search bar to find those same pre-approved descriptions)

  • Multiple classes can be registered in a single application BUT a separate filing fee is required for each class.  A SEPARATE SPECIMEN IS REQUIRED FOR EACH CLASS (see below)

Specimens
  • Specimens prove the the mark is being used in commerce.  Specimens are scanned images, digital photographs or screen captures from a browser that are uploaded into the on-line trademark application.

  • A specimen is a real-life sample of how the trademark is actually being used in the marketplace.  A specimen must show the mark being used as branding.  The specimen should generally be what consumers actually see when they are purchasing the goods or services.  CLICK HERE for a page on the USPTO website providing detailed information on the specimen requirement

    • If "services" are being sold

      • Specimens can include images that show the mark being used in marketing, advertising, business cards, websites, etc.

      • Screen captures from a website are the most common type of specimen when it is services being sold.

    • If "goods" are being sold

      • The specimens can show the mark being used on labels, hang tag or packaging (in a place where and how a consumer would expect to see branding).

      • Specimens for sale of goods can also be a webpage screen capture, BUT, the image must show a means for actually ordering and paying for the goods DIRECTLY FROM THE WEBPAGE (such as a "shopping cart" button/link, an order form, or a telephone number for placing orders).

      • If the trademark is being used in conjunction with the sale "goods" (as opposed to "services") SCREEN CAPTURES SHOWING ADVERTISING ARE NOT SUFFICIENT

The Trademark Must be Used as Branding
  • The specimens must show the trademark is being used a branding.  In other words the trademark mark must serve to create a unique identity for the business in the minds of consumers and the public

  • Simply using the trademark as words buried somewhere on a website is not sufficient".

    • The digital specimen must show the mark being displayed in a place where consumers would normally expect to find branding (which usually means at the top of a webpage, or on the inside of a shirt collar, or on the label of a bottle, etc.)

Graphical Image vs Words alone
  • A trademark can be EITHER of the following:

    • graphical image (which may or may not contain embedded words), or
    • words alone (with no graphical attributes)

  • Registering a graphical image as a trademark will protect the image but it will not necessarily protect any words that might be embedded in that graphic image

  • To protect words independently from those same words embedded in a graphical image, two separate registrations (with two separate filing fees) would be required - one for the words alone and one for the graphic image.

  • TIP TO SAVE MONEY:  If a graphic consists PRIMARILY of embedded words and the applicant wants to hold down the filing fees it might make sense to register just the words alone (with no graphical attributes) rather than registering a graphic image.  Doing that would provide better protection for the words because registering a graphic would protect only the specific graphic that was being registered but not any words that might be embedded in the graphic.  Of course, if money was no object, both the graphic mark and the words-alone mark can both be separately registered.

Ownership of the trademark
  • If the business is operated through a single member LLC having the LLC legally own the United States trademark is substantially better than owning it personally.

    • Personal Liability Protection:   If a third party sues for trademark infringement, they sue the owner of the mark. Owning the trademark through your LLC keeps legal liability inside the entity, protecting your personal assets (home, personal savings, non-business accounts) from judgment claims.

    • Streamlined "Use in Commerce" Requirements:  USPTO trademark registrations require the legal owner to use the mark in commerce. If your LLC conducts the business operations (sells products, issues invoices, runs the website), having the LLC own the mark creates a direct link.  If you own it personally while the LLC uses it, you are legally required to execute a formal written license agreement between yourself and your LLC (including control terms) to maintain a valid trademark.

    • Business Sale & Valuation:  Investors, lenders, and potential buyers expect all brand IP to be owned by the legal entity being acquired. If you own the mark personally, selling the business requires executing formal USPTO assignment filings, paying assignment fees, and updating public record titles.

    • Public Record Privacy:  USPTO filings are permanent, publicly searchable databases. Registering under your LLC allows you to list the LLC name and a business or registered agent address, keeping your personal name and home address off public registries.

  • Note: While this covers standard legal and procedural best practices, trademark law and tax structuring depend on your specific setup. Consult an attorney for tailored advice.

What Happens After Filing
  • It typically takes a few months for a trademark to be approved after the application has been submitted.  It could take longer if the application was incomplete of if other issues arise during the approval process.  Once the application has been approved the effectiveness of the trademark's protection will date back to the date that the application was first filed.

  • CLICK HERE for an information page describing what happens after a trademark application is filed.