Trademark Registration 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 mark

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).

  • The "Use in Commerce" Requirement   ("Specimens"):

    • To qualify for registration a trademark must be "used in commerce" (that is, used in conjunction with actual sale of goods or services).  In the on-line registration application one or more digital images (called" specimens") must be included proving "use 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, it must show a means for actually ordering and paying for the goods (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") images of advertising are not acceptable

      • 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 $150 fee

    Classes

    • USPTO has categorized all the possible goods and services that might be sold into "classes"

    • With each registration application there must be included a description of the goods or services being sold in conjunction with the proposed trademark.  In general, the application must use one or more of the pre-approved descriptions taken from the Trademark ID Manual

    • The software used in the on-line registration application determines the classes to be assigned to based on the description that are entered into the application

    • 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

    • The trademark will enjoy protection only when it is used in conjunction with the goods and services specifically listed in the application.

    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.

    The Proposed Trademark Must be Used as Branding

    • The specimens must show the trademark is being used a branding.  Simply using the trademark as words buried somewhere on a website is not sufficient". 

    • The tradmark mark must serve to create a unique identity for the business in the minds of consumers and the public

    • 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.)

    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.