Applying for a Trademark
Written by Gene Quinn, Patent Attorney & President of IPWatchdog, Inc.
Registering a trademark is an excellent step to take to protect your name, slogan or logo. It is, however, important to understand that not all trademarks are created equal. The information that appears on this page pertains to the acquisition of a United States trademark, not state trademarks. Every state issues their own trademarks, but getting a state trademark is virtually useless in most cases. The federal registration will for all intents and purposes trump any state registration. For example, if you get a trademark in Florida and use the mark in commerce only in Orlando, Florida, and subsequently another party files for a federal registration on the same mark, you are estopped from using your mark outside of Orlando! Moreover, a state registration does not even entitle you to rights throughout the entire state. Notice in the previous example that I said that if someone were to obtain a federal registration on the same mark for which you had a Florida state registration you would only be able to use the mark in your geographic area, not throughout the state. So if you use the mark in commerce in Orlando, Florida, and someone acquires a federal registration, they can use the mark in Miami, Tampa, Jacksonville, etc. The important concept here is that while a state registration is usually much cheaper than a federal registration, state registration provides little or no significant rights.
The first step to acquiring federal trademark rights requires that you either (1) start using the slogan, name or logo in commerce (i.e., some kind of commercial use) and then subsequently file a trademark application; or (2) file an intent to use application which will lock in your filing date but which does not require immediate use. The intent to use application is essentially a reservation of the mark for a limited period of time. You will eventually have to start using the mark, but if you are not yet using the mark in commerce this is the way to go. You can reserve the mark for an initial period of 6 months, which can be renewed with additional payment of fees for successive 6 month periods, but cannot be extended beyond 24 months. The filing fee for an intent to use was only $100.00, but this has been changed. An intent to use applicaiton now costs the same as does a regular trademark application.
The next thing to be aware of is that a single trademark application for a single class of goods or services requires a $275 filing fee. Frequently in order to get the broadest protection you will need or want a trademark in more than one class. Additionally, if you want to protect the name and the logo that would require two separate applications.
To get the broadest possible trademark protection things can get expensive, particularly if you have a logo, slogan and name that needs or should be protected in three or four classifications. While trademark protection can get expensive initially, the investment is well worth the return. A trademark is a significant asset and can lead to the development of familiarity and increased good will. If the initial expense seems large consider filing for at least one trademark application in one classification as soon as possible and then file for additional marks as funds become available.
With respect to actually filing a trademark application there are essentially three options. First, you can do it yourself. Second, you can use an online service to help you navigate through the filing process. Third, you can hire an attorney. These are each explored below.
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You can file your own trademark application directly with the United States Patent & Trademark Office. The Trademark Office has gone 100% online now, so all applications must be filed online. To file a trademark application you must use the Trademark Electronic Application System, called TEAS for short. If you are familiar with trademarks filing your own trademark is not terribly difficult. For those who are new to this area, the task can be rather daunting.
For most individuals and businesses, what you want to file will be for protection via the Principal Register, which will provide rights superior to those provided by the Supplemental Register. The best way to explain the difference is that trademarks on the Supplemental Register are not entitled to strong protection, but you can still use the familiar R in a circle - ®. What you really want is the strongest mark you can get, so always shoot for the Principal Register and then, if the Trademark Examining Attorney at the USPTO is not going to allow the mark to issue because it is considered to be descriptive, then settle for registration on the Supplemental Register, which is indeed better than nothing given that most individuals don’t know the difference. But remember, the Supplemental Register should be a fall back, not the primary option.
The next thing you are going to need to do is determine which classification your trademark will fall into. This is perhaps the most difficult thing for those who are new to trademark applications. The Trademark Office does have a web resource for determining the appropriate class, which tries to make this an easy task, but easy is certainly a relative term.
Finally, you are going to need what are called “specimens” of your trademark. A specimen is just an example of the trademark in use. For more information about what can qualify as a specimen see Material Appropriate as Specimens for Trademarks.
If your head is spinning and you are ready to throw in the towel, please think again. A trademark is a significant asset. Having a federal registered trademark will prevent others from using the mark, and if the mark is your name or slogan then you are going to be able to significantly distinguish yourself from competitors. The benefit you get for the cost is really a good trade. Even if you wind up on the Supplemental Register others will see the familiar R in a circle - ® - and likely steer clear. Nevertheless, for those new to the area the time they may have to spend figuring things out for themselves is not time well spent.
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If you would like to file a trademark application with some help, but without actually incurring the expense of hiring an attorney, you may want to try one of several online services that have worked to create an easier to use application system. What they have done is simplify the online application by turning it into a series of easy to answer questions, each of which come with an explanation to help you through the process. Because the TEAS system is not very user friendly, and figuring out exactly what needs to be submitted and what class of goods you should use for your mark is not at all trivial, it may well be worth your while to use a trademark application service.
Here is as good a point as any to explain a bit about trademark searches. You probably see some ads from Google on this page for trademark searches, and the prices probably range from $99 to $600. As with everything in life, you get what you pay for. A trademark registerability search usually runs about $99, but that is only going to search to see if you can get a federal trademark registered. Those trademark searches that range from $399 to $600 usually are comprehensive searches that will search every possible database to see if anyone else is using the trademark, or similar mark. The difference is this, just because you register the mark doesn’t mean you can prevent others from using the mark if they have already been using it prior to your registration. Furthermore, if there are people using something similar it would likely be desirable to change the trademark so that it is more differentiated from other uses, even if the uses are not in conjunction with a registered trademark.
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Alternatively, you could have an attorney prepare a single trademark application you could expect the following charges, which are probably rather uniform in most parts of the US:
Filing fee (for one mark in one class) = $275
Trademark Search = $99 to $600 (depending on type of search)
Attorneys Fees Relative to Trademark Opinion = $500 to $1000
Attorney Fees Relative to Filing Trademark Application = $500 (approximate)
Attorneys Fees Relative to Prosecuting an Application = $500 to $1000 (but can go much higher if others oppose trademark issuance, or if the mark is borderline trademarkable)It is important to realize you could choose to initiate the trademark application without first obtaining a trademark search and a trademark opinion. A search and trademark opinion is preferrable, however, because it will let you know if anyone else is using a similar mark. This gives you the ability to make changes to the mark before you file, which can and should help ensure easier passage through the Trademark Office. A search also lets you know if others are using something so similar that you may want to choose something else to preserve distinctiveness. The real benefit of a search and opinion is that you will be able to make changes prior to spending money on business cards, letterhead, advertising and the like, and as any small business owner knows, these costs really start to add up.
