Follow these steps to prepare for submitting a trademark application.
Begin with the USPTO's Trademarks Basic page. It leads you through the trademark process from start to finish and incorporates the Trademark Information Network's Informative and entertaining videos addressing the following topics:before filing; searching; applicant information; drawing issues; goods and services issues; basis information; specimen issues; after you file; and post-registration issues. A recap of the process follows below with added details.
1. Decide whether you need a:
- Trademark - a single word, phrase, symbol or design or combination thereof used to uniquely identify and distinguish the source of a product (Example: the Nike swoosh).
Service mark - performs the same function as a trademark for a service instead of a product (Example: CompUSA, the parent company of H&R Block)
Copyright - protects an original artistic or literary work (Example: The Da Vinci Code lawsuit).
Design Patent - protects a new or original appearance/design of a manufactured item (Example: a coffee pot shaped like a flower)
Trade Secret - protects a formula/recipe/process, etc. that gives a business a competitive edge (Example: Bush's Baked Beans or Coca Cola syrup).
2. If the trademark category fits, decide:
- If you will register at all.
- If you will register only in one or a few states where you primarily do business.
- If you will register nationally.
- If you will register internationally.
- If you will hire an attorney. Law schools in some states have a Law School Clinical Certification Pilot Program.
3. Keep in mind the reasons new trademarks are commonly refused:
- similarities in sound, appearance, and meaning*
- 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 those that would contradict those qualities/characteristics
- primarily geographically descriptive or misdescriptive
- a surname (last name)
*Note: Words that sound the same as an existing trademark although spelled differently will be rejected, especially if they apply to a similar product with a similar use.
5. Do the Steps in a Trademark Search
Combined instructions from the former PTDLP (Patent Trademark Depository Library Program) and its replacement, the PTRC (Patent Trademark Resource Centers).
- Describe your product(s) or service(s).
- Use the Acceptable Identification of Goods & Services Manual to identify specific terms that describe your product(s) or service(s). In Jan. 2015 the Trademarks Next Generation Acceptable Identification of Goods and Services Manual (IDM-NG) premiered. Both systems will co-exist for a while and contain synchronized data.
- Determine the international class. NOTE: Under U.S. Trademark law, class headings from the International Schedule of Classes of Goods and Services by themselves are not acceptable for registration purposes. The specific items of goods and/ or services must be listed. Watch the video Identifying Your Goods and/or Services for further clarification.
- Determine related goods and services and their classes.
- Develop a basic search strategy.
- Broaden your search strategy.
- Conduct the search in TESS (Trademark Electronic Search System)
- Search logos and designs in the Design Code Manual if your mark evokes a strong visual image or is an image without text.
6. If your search yields a mark that might conflict with your mark,
- Check TSDR (Trademark Status and Document Retrieval) to view the mark's status. View, print, and download data about a trademark application or registration.
- Use the serial number, registration number, reference number, or international registration number of that mark to conduct a search.
- If you find a dead mark similar to yours, consider contacting the company to see if they have continuously used the mark in commerce but failed to pay maintenance fees to keep it live.
9. To maintain a trademark once granted:
- Renew every 10 years. Registrations issued before 11/16/89 remain in force for 20 years and are renewed for 10 year periods. Those issued on or after 11/16/89 remain in force for 10 years and are renewed for 10 year periods.
- Between the 5th and 6th year after registration submit Section 8 Affidavit of Continued Use or Excusable Nonuse.
- Between the 9th and 10th year after registration and every 10 years thereafter submit
- Section 8 Affidavit of Continued Use or Excusable Nonuse, AND
- Section 9 Renewal Application
For more information see the USPTO's Trademark FAQs.