For any business looking to establish its identity in the US market, registering a trademark is an essential step. Not only does it give the legal business ownership over its brand, but it also safeguards its intellectual property rights and establishes credibility with its customers.
It’s not a perk you can get, it’s more of a necessity. Trademark registration online in the US is the most important step for a business to convert into a serious business.
However, many American business owners are often unsure of the process involved in trademark registration online in the US. In this article, we will provide a detailed step-by-step guide to registering your trademark in the US. We will help you navigate the legal complexities and ensure that your brand is protected from any potential infringement.
Whether you are a startup or an established business looking to expand, trademark registration is an indispensable tool for building your reputation and succeeding in a competitive marketplace.
But before we get into the trademark registration process, we should know what trademark registration is in America, and why it is essential to get it done.
Register Trademark Online With USPTO
What is USPTO? Why did I mention this? Why is it important?
The United States Patent and Trademark Office (USPTO) is a government agency responsible for granting patents and registering trademarks in the United States. Essentially, it is the gatekeeper for intellectual property protection in the country.
When someone invents a new product or process, they can apply for a patent with the USPTO. If granted, the patent gives them exclusive rights to produce and sell their invention for a certain period.
The USPTO’s mission is to promote innovation and stimulate the economy by granting intellectual property rights.
Mainly, the USPTO provides resources and education to help inventors, entrepreneurs, and businesses navigate the intellectual property system.
Types Of Trademark Registrations In The USA
Trademark registration is a vital step in establishing and protecting your brand identity in the US. It is a legal process that involves registering your brand name, logo, or slogan with the United States Patent and Trademark Office (USPTO). The USPTO recognizes ten types of marks that you can register as a business owner. They are as follows:
- Word Mark
A wordmark is a symbol consisting of drawings and standard characters. All letters and words are in Latin characters, while numbers are in Arabic or Roman figures. It includes only basic punctuation and phonetic signs without any design elements. It represents a brand’s identity clearly and concisely.
For example; – Xerox®, The Michelin Man®, and The Nike Swoosh® are all examples of work marks.
- Design Mark
A creative symbol, either a crafted phrase or an imaginative design, is what we call a design mark. To preserve its artistic flair, this emblematic artwork needs to be saved in the digital format of a .jpg file. The picture’s resolution must be between 300 and 350 dots per inch, with its dimensions stretching between 250 and 944 pixels.
- Color Mark
When it comes to color-based logos, visual representations in vibrant hues are vital. These depictions must be accompanied by two essential elements – a color claim that identifies the specific shade(s) employed in the design and a separate statement that describes the color(s) location and usage within the logo. Furthermore, the color claim and location statement must use the conventional color name(s) to avoid ambiguity.
- Shape mark (the configuration, shape, or design of a product or product packaging)
A unique way to identify a product or its container is through a shape mark. It’s a design that takes on a three-dimensional form or configuration. To get the ball rolling, the applicant must provide a crystal-clear representation of the mark and confirm that it’s an image in three dimensions.
For example, the shape of the Coca-Cola bottle, the shape of the Toblerone chocolate bar, or Hershey’s Kisses are all shape marks under USPTO regulations.
- Sound Mark
To fulfill the requirements of the application process, a delightful and skillful contender should present a digital recording in one of the following formats: .wav, .wmv, .wma, .mp3, .mpg, or .avi. The size of the file must not exceed 5 MB, but the content should be as big as possible! Moreover, the applicant should exhibit their mastery by providing an exhaustive and fascinating portrayal of the sound, along with any linguistic expressions or verses utilized in it.
- Scent or Flavor Mark (a.k.a Olfactory Mark)
When submitting a scent or flavor mark, it’s important to provide indisputable proof of the unique qualities that have been acquired, which includes a comprehensive description of the scent or flavor, as well as an exact sample to match. So, whether it’s a tantalizing scent or a delectable flavor, ensure you have all the necessary documentation to make your mark stand out from the rest!
- Touch Mark
A distinct touch or texture can also be trademarked, although they seem to be the least popular way of trademark registration. A touch mark has to be sent in a graphical format, more information of which can be found on the official USPTO website.
For example; Fresh Inc. has secured ownership of a registration for their delightful creation: oval-shaped soap, enveloped in cotton-textured paper, and held together by a coiled silver-colored wire, fastened to a semi-precious stone bead. It’s worth noting that the texture of the cotton paper is not the only aspect protected by the registration, but rather, the entire product as a whole.
- Motion Mark
If your mark has a groovy, repetitive motion, you have the option to submit a drawing of a single moment in the movement or up to five freeze frames that capture different points in the action. Whichever showcases your mark’s commercial impact best is the way to go! And if you’ve got a cool audio or video sample that captures the essence of your mark’s motion, attach it to your TEAS form in one of these file formats: .wav, .wmv, .wma, .mp3, .mpg, or .avi. Just remember to keep it under 5 MB for audio and 30 MB for video. Of course, you’ll want to give a detailed explanation of the movement too.
- Collective Membership Mark
A brand new emblem that symbolizes a group’s membership as a whole can be seen as a badge of honor, representing an association, cooperative, or similar organization.
- Certification Mark
Certification marks are a fabulous way for one entity to show their trust in the quality of services or goods of another entity. These marks can take the form of a symbol, a name, a word, or any other type of creative device that captures the essence of the certification. The certification itself can cover a whole range of features, such as the material used, the region of origin, the manufacturing process, and of course, the overall quality and accuracy of the goods or services.
Step By Step Process To Register Trademark Online In The USA
The first question to ask is whether getting a trademark registered for your company in the USA is the best decision for you. If you have come this far in the article, we can assume that you’ve made this decision already. So the next question that arises is how your trademark should look. This takes us to the first step that comes under trademark registration in the USA.
But before we dive into it, there is some basic information that you need to know, so you don’t run into any troubles. Here are the things that you need to consider before we discuss the step-by-step procedure to register the trademark:
- Identifying the mark format: To register your trademark, it’s crucial to include a clear and accurate depiction of it in your application, also known as a “drawing”, “mark drawing” or “representation of the mark” by the USPTO.
- Identification of goods and/or services: As a business owner, you need to identify whether your business is eligible as per USPTO regulations, either as providing goods and/or services. You can watch this video to learn more about how to properly identify this.
- Trademark search: Search the USPTO database for similar trademarks before filing for federal registration. This helps avoid infringing on anyone else’s trademark rights.
Step 1: Selecting The Right Trademark
Businesses and individuals often make the mistake of selecting a mark that might be either very difficult or even impossible to register for various reasons. Not all marks can pass muster with the USPTO, and not every mark has the legal muscle to protect your brand from copycats.
Moreover, not all marks are legally defensible, meaning that some marks may not be sufficient to support a legal claim by the owner who seeks to prevent others from using a comparable mark on related goods or services. Therefore, it’s imperative to approach this step with great care and caution to ensure your mark meets the requirements for registration and legal protection.
Watch this official USPTO video to know in detail how to select a protectable trademark.
Step 2: Application Filling & Submission
Yes, all the basic work is done, and now you can get ready to submit your application. Here are the milestones that you have to complete to do so:
Setup a USPTO account: The reason you need to have an account registered at the USPTO is that you will need to access the Trademark Electronic Application System (TEAS) which enables you to register a trademark online. Before TEAS, business owners would have to physically file for a trademark. Although that is still an open option, USPTO encourages using TEAS instead, which is why over 85% of all trademarks are registered online.
Fill out the application form: You can either log on to uspto.gov, browse and find the Trademark Electronic Application System (TEAS) to apply online for your specific type of trademark. Or, you can click here and start filling out the form now! But before you start applying, keep in mind that USPTO charges an application fee simply to send it in. Not all applications that are sent in are accepted, and the application fee is non-refundable. So make your decision with complete knowledge of the fee structure. You can read it here.
Keep monitoring application: By regularly keeping tabs on your application’s progress through the Trademark Status and Document Retrieval (TSDR) system, you can ensure that you don’t miss any important filing deadlines. So, don’t be a slacker and check on your application every three to four months after its initial filing. Remember, the early bird catches the worm, or in this case, the timely filed trademark application! Save this link to monitor and track your application.
Step 3: Collaborate With The Assigned USPTO Examining Attorney
After USPTO Reviews Application
Once you submit your trademark application to the USPTO and meet the minimum requirements (fingers crossed!), the USPTO assigns your application a serial number and sends it over to an examining attorney.
Unfortunately, even if you do all the right things, and it turns out that your application is later refused for legal reasons, the USPTO won’t be refunding your filing fees (sorry, not sorry). The attorney also conducts a thorough search for any potential conflicts with existing trademarks (nobody likes copycats), and examines your written application, drawing, and any specimens you provide.
So, sit tight, keep your fingers crossed, and hope that your trademark application passes the USPTO’s rigorous examination.
Refusal of Trademark Registration (Office Action)
Should the evaluating lawyer find that a trademark is unsuitable for registration, they shall dispatch a letter (office action) to you highlighting the underlying reasons for the refusal, including any shortcomings in the technical or procedural aspects of the application. If only trivial amendments are necessary, the examining attorney may reach out to you through telephone or email.
Respond timely to the attorney’s letter
When the examining attorney hits you with an office action, you’ve got three months to fire back a response that lands at the USPTO. If you miss that deadline, your application is left abandoned like a sad puppy in the rain. But don’t fret, for a small fee, you can ask for an extension of three months to gather your thoughts and regroup. In the case that you’re a Madrid applicant, you’ve got a bit more time – six months to be exact. Just don’t get too comfy, because there’s no extension available for you.
Step 4: Applications Gets Accepted Or Denied
So, you’ve applied to register your trademark, and you’re waiting to hear back from the USPTO. If the examining attorney doesn’t raise any objections or if you successfully overcome any objections, then your mark will get the green light for publication in the “Official Gazette” – the USPTO’s weekly publication.
Exciting news, right? But wait, there’s more. After your mark is published, you have a 30-day window where anyone who thinks they might get hurt by your registration can file an opposition to it. It’s like a court proceeding, but instead of a judge, the Trademark Trial and Appeal Board (TTAB) will hear the case.
Assuming everything goes smoothly and no one opposes your mark or you win the opposition, your application will move on to the next stage. It’s worth noting that it can take a few months after publication before you get official notice of the next status of your application.
If your rebuttal fails to vanquish all opposing arguments, the scrutinizing lawyer will deliver a resolute refusal of office action. Should you find yourself at odds with the final denial, fear not! For an added fee, you may take your case to the TTAB and appeal the decision.
Here you have it! Your registered trademark!
Step 5: Maintaining Registration
In just about two months post-SOU approval, the USPTO will shoot out registration for you! But don’t get too comfy just yet. To keep that registration on the up and up, you’ll need to file some specific maintenance documents. Fail to do so and your registration could go belly up. If that happens, it’s back to square one, my friend. You’ll have to file a fresh application and start the whole process over again. And just because your mark was previously registered doesn’t guarantee a free pass on the next go-round.
Protect Your Rights From Infringement
If someone is infringing on your trademark, it’s your responsibility to take legal action to stop them. Because here’s a friendly reminder: the USPTO won’t be snooping around to make sure nobody else is using your mark. However, they’ll do their best to prevent anyone from getting a federal registration for an identical or similar mark that’s related to your goods or services. Don’t worry though, if you suspect your trademark is being infringed upon or might be in the future, you can record it with U.S. Customs and Border Protection through its e-Recordation application. Stay vigilant, trademark owner!
Conclusion: Best Practices For Trademark Registration Online
why bother registering your trademark? For one, it gives you legal protection against anyone else using a similar mark. It also adds value to your business, making it more attractive to investors, licensors, and potential buyers. Plus, it helps build brand recognition and loyalty among your customers.
Now, the process of registering a trademark can be a bit daunting, with its legal jargon, paperwork, and fees. But fear not! With the help of a qualified attorney or online service, you can navigate the process smoothly and efficiently.
So, are you ready to take the plunge and register your trademark? Don’t wait any longer – the sooner you do, the sooner you can reap the benefits. Get ready to stand out from the competition and protect your valuable brand identity.
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