Legal requirements for registering your trademark

If you sell unique goods or services, one of the most important things you can do to protect your business is to register a trademark for the things that set your brand apart.

Registering a trademark isn't inherently complicated, and the U.S. Patent and Trademark Office—an agency responsible for federal trademark registration—provides information online about how the trademark registration process works. But there are 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 is something that you can DIY. Still, there are a lot of advantages to hiring an intellectual property attorney to help you with the process, including understanding filing fees, filling out the initial application, and searching the USPTO database.

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.

There are several requirements you'll need to meet to get a trademark for your business. Here is an overview of how the registration process for trademarks works.

Decide if a trademark is right for you

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. One thing many people don't realize is that the marks (i.e., brand identifiers) you use may already be considered trademarks. They're just not registered trademarks, 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" of trademark rights.

You can use trademark symbols (TM) or service mark symbols (SM) immediately to show people that you're reserving trademark rights for your goods and services before you are officially registered.

Similarly, most states have their own trademark registries, which can also be useful but have a more limited scope. Federal registration offers the broadest possible trademark protection and provides several advantages, including:

• Protecting your customers against being defrauded
• Allowing you to use the Ⓡ symbol to deter copycats
• Allowing U.S. Customs and Border Patrol to seize infringing products from being imported
• Allowing you access to register and sell under your brand name with retailers like Amazon
• Giving you legal grounds to enforce your trademark against other companies in federal court to protect your intellectual property

Create and submit an application, and pay the required fees

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 using the free Trademark Electronic Search System (TESS) online database. A lawyer can also help with the search of the trademark database.

If it looks like you're in the clear after doing a trademark search, the next step in the application process is to file a request through the Trademark Electronic Application System (TEAS) and pay the trademark registration fees for a TEAS Standard or TEAS Plus filing option. You'll 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.

Respond to any office actions

You'll need to wait for the Patent and Trademark Office 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 abandoned.

Receive 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.

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.

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.

Four legal requirements to register your trademark

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

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 file under their personal name to get started.

Later, when 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."

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 (such as the same name or existing trademark) and, if so, how closely related your industries and trademark classes are. (There are multiple classes to choose from.)

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. For example, someone shopping for Dove body wash isn't likely to be fooled into buying Dove tools for dentists.

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 a lot of money in developing your brand. It's not as simple as just doing a search for your business name and proceeding, as many people assume.

3. You must already be using the trademark or plan to use it soon

You have two filing options:

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," which 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."

Intent to use

You can also file for a trademark on a provisional basis if you've only got plans to use it in your business but haven't actually started yet.

"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 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 additional filing fees applies. If you're unable to do that, or if you reach the end of your extension limit, your trademark application will be abandoned.

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."

Why it's helpful to hire a trademark attorney

Many people choose to register trademarks on their own in order to save the money spent on attorney fees, which are not insignificant. "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 was never a fast process, but that's become increasingly true since the 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 of 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 you weren't sure what to do.

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 what's happening. 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 may help you avoid infringing on a trademark and having to change your brand.