Legal Requirements for Registering Your Trademark

The U.S. Patent and Trademark Office, which is responsible for federal trademark registration, provides information online about how the trademark registration process works. There are a few essential legal requirements you must understand before going ahead with the trademark application process.

How do you register a trademark?

Learning how to trademark a business name can feel daunting, since a trademark can be very important to your business' success.

While it's possible to learn on your own, there are a lot of advantages to hiring an intellectual property attorney to help you with the process. An attorney or professional service can help you understand filing fees, fill out the initial application, and search the USPTO database.

Is a trademark right for you?

You can register a trademark for any type of mark that distinguishes your brand from that of its competitors. That could include your business trade name, website domain names, the desired names of your products or services, your business logos, or even jingles or business slogans. If you want to ensure customers don't confuse your brand and brand identity with another's, a trademark can help.

Getting a trademark can be a long and costly process, so first you'll want to evaluate whether it's worth it for your business.

Common law trademarks

First, consider that the marks (i.e., brand identifiers) you use may already be considered trademarks. By using the mark in commerce, you have some common law trademark rights, you just don't have a registered trademark—with all of the legal protection that provides.

"When somebody starts using the mark, and people start associating you with selling it, that's where you start developing a trademark. That is common law," says Xavier Hailey, the principal attorney of New York's Hailey Law PLLC. The geographic area where the mark is displayed matters too. “If you only use it in a certain area, like a specific city, that's going to be the scope of your protection."

State vs. federal trademarks

A state trademark offers protection only within the state where it is registered. This is a cheaper and quicker option than a federal trademark, but it offers less protection.

Federal registration offers the broadest possible trademark protection and provides several advantages, including:

• Protecting your brand integrity across the country
• Allowing you to use the Ⓡ symbol to deter copycats
• Allowing U.S. Customs and Border Patrol to seize infringing products from being imported
• Giving you legal grounds to enforce your trademark against other companies in federal court to protect your intellectual property

Trademark registration process

The trademark registration process is complicated, but it doesn't have to be intimidating. Here's a breakdown:

Step 1: Prepare your application

Before you submit trademark applications, you'll need to do some prep work to make sure your trademark isn't too similar to other registered marks—a standard known as "likelihood of confusion."

Anyone can do this by conducting a trademark search through the USPTO trademark database. For a more thorough search, you may also wish to hire a professional trademark search service.

You'll also need to provide supporting documents, including a drawing of your design or standard character mark and a "specimen" showing how you're currently marketing and using that trademark in your business.

Note that you can apply for a trademark even before you're actually using it in your business. You'll just need to file a specimen within six months of approval in order to comply with trademark law.

You can find sample forms and a detailed list of requirements on the USPTO Trademark Center website.

Step 2: Submit your application and pay the fee

If it looks like you're in the clear after doing a trademark search, the next step in the application process is to submit your application. You can do this in one of four ways:

• Online. The preferred method to file your registration is through the Trademark Center. The cost for online trademark registration is $350.
• On paper. You can also file your application by mail or hand delivery. This method will run you $850.
• Hire a trademark attorney. An attorney can help you avoid delays, penalty fees, or rejection. You can expect an attorney to run you several hundred to a few thousand dollars.
• Use an online service. These services are more budget-friendly but still offer the peace of mind that a professional is handling your case. LegalZoom's trademark registration service costs $649 plus federal filing fees.

While it may seem expensive to use a professional trademark service, a trademark application with missing or insufficient information will be subject to additional fees—and if your application is rejected, your filing fee is nonrefundable.

Step 3: Respond to any office actions

Your case will be assigned to an attorney in the USPTO for review. This process can take several months. You'll need to wait for them to process your application, during which time it's especially important to keep an eye out for any "office actions."

"That's where the trademark examiner gives a preliminary rejection on your application, and they give you reasons why," says Kasia Zebrowska-Trauben, a patent and trademark attorney based in Los Angeles at Caldwell Intellectual Property Law.

You shouldn't fret if you receive an office action, but you should be prepared to act quickly. "It's not uncommon," Hailey says. "It could be very minor things like, 'Hey, you used a P.O. box as your address, and you cannot use a P.O. box for your address.' Or it could be major, such as a 'likelihood of confusion.'"

You'll have three months to fix those problems. Otherwise, your application will be considered abandoned.

Step 4: Await a decision

Once the trademark examiner determines there aren't any barriers to registration, the USPTO may approve your trademark for publication. This means it'll be printed in the weekly publication Trademark Official Gazette. This gives the general public a 30-day window from the publication date to see your potential trademark and raise any objections.

If no one objects, your trademark will be officially registered within a few months, if you've already submitted a specimen. If you're filing preemptively, your trademark registration won't become official until you show a specimen as proof to the USPTO that you're now actually using it in your business.

Step 5: Keep your registration active

Your trademark registration doesn't last forever. You'll need to file periodic forms with the USPTO to show your trademark use is still active—typically five and 10 years after you registration date of your trademark—and then every 10 years thereafter.

If you don't file these forms, your trademark registration will lapse, and you'll need to go through the entire process all over again if you want to keep it registered.

4 legal requirements to register your trademark

Registering a trademark takes many steps, but there are only four actual legal requirements you'll need to meet.

Requirement #1: You must file under your own individual or business name

The USPTO requires you to submit your business' contact information with a physical address, and P.O. boxes aren't allowed. That can lead to some important considerations, especially if you're running a home-based business.

"A lot of times people don't want their private name [used] because it's public record once you file your trademark application," Zebrowska-Trauben says. But time is also of the essence when it comes to registering a trademark, so many people do end up filing under their personal name to get started.

Once you register as a business entity—such as a limited liability company—you can easily transfer the trademark over by filing what's known as an "assignment." If you're already registered as a business entity, you can start off with using your business name and address as the trademark owner.

Requirement #2: You must have a distinctive mark

Not everything is able to be trademarked, especially if it's not specific enough to differentiate your own brand from others. This is an important consideration in how to trademark a business name.

In particular, the USPTO cautions that trademarks falling into these two camps are likely to be denied:

• Generic. Common, everyday names aren't eligible to be registered because they're too broad. For example, you can't trademark the business name "Food Store" if you operate a grocery store chain or "Landscaping Company" if you run a lawn care company.
• Descriptive. Something that merely describes some aspect of your product generally isn't able to be registered. For example, trademarking a business name like "Tasty" alone if you run a burger joint or "Pine Forest" if you sell candles isn't generally allowed.

On the other hand, trademarks that are eligible to be registered generally fall into these three camps:

• Fanciful. "These words are just made up. There's no English word," says Hailey, who cites Yahoo and Google as examples.
• Arbitrary. Compared with fanciful marks, arbitrary marks are English words, but they don't apply to your goods or services. For example, Dove sells personal care products, but it wouldn't be able to use that trademark name if it sold the actual birds.
• Suggestive. "It suggests that the goods and services [have certain qualities], but you have to go through some mental gymnastics to come to that conclusion," says Hailey. For example, the trademark name Pop Rocks points to the fizzing sensation of this sugar crystal candy.

In addition, the USPTO uses a "likelihood of confusion" standard to judge your trademark against all other registered trademarks. It evaluates whether your trademark looks or sounds confusingly similar to other trademarks and, if so, how closely related your industries and trademark classes are.

Your trademark can still be similar to others as long as the USPTO rules that a consumer isn't likely to be fooled about the source of the two products.

This is one area where hiring an attorney can be really helpful. They'll be able to perform a trademark search and flag any issues before you submit a trademark application and invest in developing your brand. It's not always as simple as just doing a search for your business name and proceeding.

Requirement #3: You must already be using the trademark or planning to use it soon

There are two distinctions to be made here.

The first is use in commerce. This is your filing basis if you're already using your trademark in your business. In addition to your trademark drawing, you'll need to provide a specimen that shows proof of how you're currently using your trademark in your business.

"One common specimen that I use is a screenshot of a live website that shows the mark associated with the goods on the website," Zebrowska-Trauben says. "Something like that is a pretty easy specimen to show—if it applies, of course."

You could also file on a provisional basis if you've only got plans to use it in your business but haven't actually started yet. This is called intent to use.

"A lot of people may not know that you can use that 'intent to use' basis to your advantage sometimes," Zebrowska-Trauben says. That's because the USPTO works on a first-to-file basis, so if you've got a hot idea for a brand name, you could be edged out if someone files before you. "I would say always for trademarks: the sooner the better."

You can't file intent-to-use trademarks willy-nilly though. If your application is approved, you'll be issued a notice of allowance from the USPTO that says your mark is eligible for registration. You'll then have a six-month deadline to start using your trademark in your regular course of business. You'll then file a statement of use, which includes a specimen to prove that you're now using the trademark. At that point, your trademark can be officially registered.

If you can't do that, you can file for up to five six-month extensions, although you'll have to pay additional filing fees. If you're unable to do that, or if you reach the end of your extension limit, your trademark application will be abandoned.

Requirement #4: You must hire an attorney if you're a foreign citizen or company

International customers or those based outside the United States will need to hire a U.S.-licensed attorney to advise you and represent you before the USPTO. If you have U.S. national citizenship, this isn't a requirement.

"You could do it on your own, but I highly advise against it," Hailey says. "Even the United State Patent Trademark Office advises against it. It's not as simple as you think it is."

Benefits of hiring a trademark attorney

Many people choose to register trademarks on their own in order to save money. "It can vary from firm to firm, but I'd say between $1,500 and $3,000" per trademark, Zebrowska-Trauben says.

But there are many reasons why hiring an attorney who's well-versed in intellectual property issues is a good idea:

Saves time

Getting a trademark registered is never a fast process, but that's become increasingly true as business ownership has boomed since the COVID-19 pandemic. "In the past, it used to be three to four months" before you'd hear anything back after filing an application, Hailey says. "Now there's a huge backlog at the Trademark Office, [and now] you're not hearing anything back until like nine or 10 months."

Saves money

Attorneys can more than make up for their fees if they can guide you around costly mistakes, such as having to file for extensions or revive an abandoned application because of mistakes. Remember: this process is complicated and one mistake can cost you a lot of time and money.

Avoid filing mistakes

It's not uncommon for trademark attorneys to be hired by business owners who've made mistakes in their applications or are just generally confused by the process. Each time you make a mistake, however, that only adds to your own cost and extends the amount of time it takes to get your trademark registered. "Those mistakes can actually prevent them from getting a registration," Hailey says.

Avoid having to rebrand

"I've seen where someone will have a really clever name, and then they come to try to get a mark. We run the search and find that there's something similar, and then it can get very complicated and expensive," Zebrowska-Trauben says. Even if you don't have any plans to register your trademark, performing a search before you start using it in commerce may help you avoid infringing on a trademark or having to change your brand.