Filing a Trademark

US Patent and Trademark OfficeThe Internet has increased the importance of protecting trademarks and intellectual property.  Filing and registering a trademark can be a complicated process and it is essential to be familiar with Federal or State Law before filing any trademark.  Specifically, any business trademark can be registered under State Law; however, registering under Federal Law has many advantages.  For instance, a trademark that is registered under Federal Law provides a nationwide “constructive notice” to other businesses that the trademark is currently claimed or under ownership.  Moreover, Federal registration provides prima facie evidence that the trademark is under the exclusive ownership and control of its owner.  All fifty States have statutes (laws) that allow filing and registration of a trademark.

Rejected and abandoned applications are common and are a big waste of money.  The most common reasons for a trademark application rejection are:

•    Similarities in sound, appearance, and meaning to an existing trademark.  Words that sound the same, although spelled differently may be rejected, especially if they apply to a similar product with a similar use.
•    Similarities in use and marketing
•    Merely descriptive or misdescriptive.  Avoid terms either commonly used to describe the qualities/characteristics of the product or service or that would contradict those qualities/characteristics.
•    When a trademark is used in connection with a good or service of the applicant and is primarily geographically descriptive or deceptively misdescriptive.
•    Surnames (last names).

Filing Information for US:

There are two ways to file a trademark application with the U.S. Patent and Trademark Office (USPTO), either electronically via the Internet or by mail.  According to the USPTO, an electronic filing of a trademark application is the preferred and best method.  Electronic filing is cheaper, more efficient and the processing time is much faster.

To file electronically go to:  http://www.uspto.gov/teas/

To file a trademark by mail, call 1-800-786-9199 to request an application form.  Once the application is completed, send to the following address:

Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451

Steps to Filing a Trademark:

It is imperative to know what you are doing before you attempt to file your trademark.  The following is an overview (not inclusive) of steps to properly file your trademark:

1.  Choosing a Trademark:  Be creative and unique.  Remember, a trademark is a word, symbol, phrase or design (or a combination of them) that is unique to a company’s good or service.  Importantly, the trademark has to be distinguishable from other trademarks and cannot be misleading or contrary to community morals or decency.  The trademark cannot also be overly broad or generic.  If your application is rejected, the USPTO will not refund your filing fees.

2.  Research your Trademark:  Do your homework.  A good trademark search of similar goods or services will avoid costly development, marketing, advertising expenses and potential legal fees if it is later determined that you infringed on another company’s trademark.  There are countless companies and law firms that offer trademark searches.  However, if you choose to do it alone you must search not only the Federal database, but should also search the common law and trademark databases of all 50 States.  A comprehensive search can be time consuming and tedious, but it is well worth it.  Use the Trademark Electronic Search System (TESS) to search through the Federal database.

3.  Determine International Trademark Class:  To know the Class is to know your filing fees.  Typically, trademarks fall under one Class but there are some instances where a good or service will cross over into more than one classification.  If your trademark is in more than one Class, you pay more in filing fees.  You can find the Class listing here.

4.  Trademark Application:  Be thorough and accurate in the trademark application.  A carefully filled out application will ensure a more efficient and quicker processing of it.
In addition, in order to qualify for registration your trademark must be in commercial use.  Finally, the application process typically takes about 10 months so be patient and periodically check the status of your application online (if you filed electronically).