A trademark is a word, phrase, symbol, or design that identifies and distinguishes the source of the goods or services of one party from those of others. Trademarks are valuable assets for businesses, as they help to build brand recognition and loyalty among customers. However, not every trademark is registrable or legally protectable. Therefore, before you apply for a trademark, you need to do some research and preparation to make sure your mark meets the requirements and avoids potential conflicts with existing marks. Here are some steps you should take before applying for a trademark:
1. Conduct a trademark search
The first thing you should do before applying for a trademark is to conduct a trademark search to see if your mark is already in use by someone else. You can use the free Trademark Electronic Search System (TESS) online database to search for registered trademarks and pending applications in the United States Patent and Trademark Office (USPTO). You can also search for unregistered trademarks on the internet, social media, domain names, state trademark databases, and other sources. One thing to keep in mind is that while you should obviously make sure no one has the exact name for the same goods or services that you have, you should also look for marks that are similar to yours in appearance, sound, meaning, or commercial impression, and that are used on related goods or services. If you find any such marks, you may have to modify or abandon your mark to avoid a likelihood of confusion, which could result in a rejection of your application or an opposition from the owner of the prior mark.
2. Identify your goods or services
The next thing you should do before applying for a trademark is to identify the specific goods or services that you offer or intend to offer under your mark. This is important because trademarks are registered for specific categories of goods or services, known as classes. The USPTO uses the International Classification of Goods and Services (also known as the Nice Classification) to classify goods and services into 45 separate classes. You need to select the appropriate class(es) for your goods or services when you file your application. You also need to provide a clear and concise description of your goods or services within each class. You should avoid using vague or broad terms that could cover many different types of goods or services, as this could limit the scope of your protection or cause confusion with other marks.
The government currently charges $250 for each class that you file in if you file using what’s called TEAS Plus (meaning, you only use the government’s pre-approved descriptions), and they charge $350 for each class if you file using TEAS Standard (which allows you to custom write your description if there are no pre-approved descriptions that accurately describe your goods or services).
3. Decide on your filing basis
You will also need to decide on your filing basis before filing your trademark. This refers to whether you are already using your mark in commerce (actual use) or you have a bona fide intention to use your mark in commerce in the future (intent-to-use). Your filing basis affects the requirements and fees for your application, as well as your rights and obligations during the registration process. If you file on an actual use basis, you need to provide evidence of your use of the mark, such as pictures of the goods, labels, tags, packaging, invoices, advertisements, or website screenshots. You also need to provide the date of first use of the mark anywhere and in commerce. This will all need to be included with your initial application. If you file on an intent-to-use basis, you do not need to provide evidence of use at the time of filing, but you will need to file a statement of use (SOU) and pay an additional fee before your mark can be registered. You will also need to file extension requests every six months if you are not ready to use your mark within six months of receiving a notice of allowance (NOA) from the USPTO. Please note that the government only allows you to file up to 5 extension requests.
4. Prepare your trademark drawing
Another thing you should do before applying for a trademark is to prepare your trademark drawing. A drawing is a clear and accurate representation of your mark as you want it to appear on the register. You need to submit either a standard character drawing or a special form drawing depending on the type of mark you have. If you have a standard character mark (a mark that consists only of words, letters, numbers, or punctuation without any stylization or design), you will merely need to type the words in plain text on the appropriate spot of the application. If you have a special form mark (a mark that has any stylization, design, logo, color, sound, shape, scent, etc.), you need to submit an image file that shows exactly how the mark will appear (any and all words, any and all shapes, etc.—exactly as it appears). Please note that if you submit a special form drawing, but then, later on, change the font of the wording in your logo, that change in font will not match the trademark you filed for and will not be sufficient to prove use (because, again, it needs to match exactly).
5. Check your domain name availability
It is also recommended that you check your domain name availability prior to filing your application. Having a domain name that matches your trademark can help you establish an online presence and attract more customers. However, please know that simply having a domain name does not give you any trademark rights, nor does it guarantee that your domain name is not infringing on someone else’s trademark rights. For this reason, you should check the domain name availability along with the trademark name availability to ensure that your branding strategy is aligned.
Applying for a trademark can be a complex and lengthy process that requires careful planning and preparation. As a recap, before you apply for a trademark, you should conduct a trademark search, identify your goods or services, decide on your filing basis, prepare your trademark drawing, and check your domain name availability. By following these steps, you can increase your chances of getting your mark registered and protected by the USPTO. If you want to know more about the trademark process, or if you want an attorney to assist you with your trademark application, contact us today.