At Carson Patents, we offer a straightforward 4-step process for trademark and service mark registration applications. This process covers securing registration for your mark, which can be a business name, brand name, logo, slogan, or any unique visual, olfactory, or auditory elements used to distinguish your products, goods, and services.
We begin by conducting a trademark clearance search and common law search to determine if the mark is available for trademark registration. If the mark is not already in use, we proceed to draft and file a trademark registration application. If the United States Patent and Trademark Office (USPTO) examiners raise any issues regarding the application, we draft responses to address these issues in a process called trademark prosecution. Trademarks are officially registered when they are approved and added to the Principal Register or Supplemental Register by the USPTO.
Carson Patents will work closely with you throughout the process to pursue a trademark for your logo, brand, or business name. Contact us about any of these steps for trademarking for your logo, brand, slogan or business name.
Our 4 steps to trademark registration applications are:
Carson Patents®
- Conduct the clearance search and common law search.
- Prepare and draft the trademark registration application.
- Submit the trademark registration application.
- Respond to communications from the USPTO examiner.
4 Steps to Trademark – How to Apply for a Trademark
Steps to trademark a business name, brand name, logo, slogan, or any unique visual, olfactory, or auditory elements you use to distinguish your products, goods, and services.
Total Approximate Time 275 days
Trademark Step 1: Clearance Search and Common Law Search (Business Name and Mark Use Search)
The first step in our 4-step trademark registration process is the clearance search and common law search. These searches involve checking if other businesses or individuals currently use the mark you intend to register to identify your services or products. They are conducted by searching the databases at the USPTO, state and international databases, and the internet generally. The clearance search involves looking for USPTO trademarks similar or identical to the mark you plan to register. The common law search involves searching the open internet for any uses of your mark utilizing a search engine (we recommend DuckDuckGo).
– For USPTO searches, use the USPTO’s Trademark Electronic Search System (TESS).
– If your business extends globally, you should also research the international Global Brand Database (GBD) provided by the World Intellectual Property Office (WIPO).
– Utilize image search engines to check if any images you plan to register are in use.
Tip: Use both the words and visual elements of your mark when conducting the search.
Tip: Before you apply to register your mark, be sure that it is not already being used. Proceed to the next step only if the mark is not already in use. If your mark is already in use, consider changing it. Alternatively, contact an experienced trademark attorney to assess the potential for registering the mark. Your mark may still be eligible for a trademark if the use would not cause confusion or if geographic areas can be distinguished.
Tip: At Carson Patents, we recommend reaching out to a trademark attorney before beginning the trademark process. Working with an attorney from the beginning can help ensure that you conduct a complete and proper search and put together a strong trademark application. Contact us for a free trademark consult.
Trademark Step 2: Prepare Trademark Registration Application
The second step in our 4-step trademark registration process involves getting ready for online filing. Taking the time to prepare before filing saves you time by helping you avoid potential office actions from the USPTO, which might otherwise require drafting a response to fix the application.
– Make sure you have complete contact information for the owner of the mark, whether it be a business or individual.
– Make sure you have downloadable electronic copies of any images you plan to register.
– Write concise and effective descriptions for your logos and audio clips before filing your application. The online application requires short written descriptions for logos and audio clips.
– Decide on the classes (business uses) you intend to register for.
– Make sure you have an electronic copy of evidence of use in commerce, or proof that you have conducted business with your mark.
TIP: If you are uncertain about the class or classes to register for, consult the USPTO’s ID Manual to find the appropriate one(s). Use the ID Manual to search for the product or service associated with your mark. While you have the option to select and register multiple classes, note that there is a fee for each class.
TIP: Evidence of use in commerce may take the form of a printout from your website or photos depicting the use of your business name, logo, slogan, or audio clip on signs, vehicles, buildings, menus, handouts, books, etc. If your evidence is in hardcopy, scan it or take a photo so you have an electronic copy. If it is online, go to the URL and print the screen or page as a *.pdf file so you have an electronic copy.
TIP: It is advised to pursue broad registration for your mark to provide flexibility. For example, registering your logo in black and white allows you to modify colors for different seasons or events. If you prefer not to register a specific font, you can opt for the “Standard Character Format” to retain flexibility in font choices later on. Explore our article on best practices for trademark registration for more insights.
Trademark Step 3: Submit Trademark Registration Application
The third step in our 4-step trademark registration process involves submitting the application and paying the USPTO filing fee. To protect a mark in the United States, applications are filed online using the USPTO’s Trademark Electronic Application System (TEAS). At Carson Patents, we offer an easy and straightforward trademarking process through our intake application [INSERT LINK]. Contact us to learn more about our trademarking services.
– Enter the information gathered in step 2 and upload the necessary electronic files in the designated sections as prompted by the application.
– After filling out the application completely, carefully review the details and check for any spelling errors before submitting.
– Make sure to pay the required USPTO filing fee for each requested class.
– Once the application is submitted, the USPTO will email you a receipt. This receipt will include reference numbers that can be used to locate the application online.
Note: It is normal for the new application to take a few days before becoming visible online.
International Trademark Registration: Once a mark is registered in the U.S., it can be registered internationally through WIPO. The Madrid Application Assistant (MAA) for international trademark registration is maintained by WIPO. You can access MAA here.
Trademark Step 4: Respond to USPTO Communications and Office Actions
The fourth and final step in our 4-step trademark registration process involves responding to any communications from the USPTO. If the mark is distinctive and has been used in commerce to identify your brand, and if all aspects of the application are in order and submitted properly, you will receive correspondence from the USPTO confirming that the mark has been or will be registered. Continue addressing the maintenance and payment notices to ensure everything remains in order and you are set for trademark registration. Read about the types of various communications an applicant may receive after filing in our article USPTO Office Actions in a Trademark Application: How to Respond.
In case of any issues requiring further action, you will need to respond to USPTO office actions in a process called trademark prosecution. If you are not working with an attorney already, Carson Patents recommends reaching out to a trademark or intellectual property attorney for this step to ensure that you draft a thorough and proper response to these office actions.
Estimated Cost: 350 USPTO TEAS filling fee per class + attorney fees
Supply:
- Your mark: a business name, brand name, logo, slogan, or other sound, smell, or visual imagery used to distinguish your products, goods, or services.
Tools:
- Email account
- Internet connection
Materials: Ideally, you will have proof you are using the mark in business operations before applying to register. The evidence can be physical (signs, product listing, menu, etc.) or online, but it must be converted to an electronic file. Optionally, you may also have specifics for colors and fonts for your brand.
What are the Three Requirements to Register a Trademark?
There are three requirements that must be met in order to register a trademark. Before beginning the four steps to trademark registration, ensure your mark meets these three requirements that are essential for registration:
- Mark is used as a brand identifier;
- Mark is distinctive; and
- Mark is used in commerce.
These requirements collectively demonstrate that you are using a distinctive mark in commerce to identify your brand. Meeting these criteria not only provides your mark with automatic protection under common law but also renders it eligible for trademark protection with the USPTO.
Using The Mark As A Brand Identifier
The first requirement is using the mark as a brand identifier. Put simply, you must confirm that the mark is actively used to distinguish the goods or services offered by your brand. It is crucial to avoid using the mark solely for decorative purposes, as trademarks and service marks are meant to be more than mere decoration. The primary purpose of using the mark should be to inform consumers about the business from which they are purchasing the product.
Having A Distinctive Mark For Your Brand
The second requirement is that the mark must be distinctive, meaning it has to be unique and distinct enough to show that the goods or services are from your company and not another. Marks resembling those of other entities might lead to potential confusion, which can be grounds for rejection of the application. The purpose of the distinction requirement is to prevent any confusion between your mark and those used by others. For more insights, refer to our article on the best practices of brand selection.
Use In Commerce
The third requirement is that the mark has to be used in commerce. This means that the mark should already be branded on goods and services that are being actively sold. Although it is possible to apply for trademark or service mark registration before using the mark, lack of use in commerce will prompt an office action response from the examining attorney instructing you to submit proof of use in commerce. This can cause unnecessary delays in the trademark application process and make the process more expensive. Read more about the best time to pursue trademark protection.
Six Potential Grounds for USPTO Registration Refusal
Generally, a trademark application will be successful unless there are grounds for the USPTO to refuse the registration. There are at least six common reasons why trademark registration applications are rejected. The first step in our 4-step trademark registration process—the clearance and common law search—aims to assess the potential likelihood of a mark facing refusal based on one or more of these grounds. The six most common reasons for trademark registration rejections stem from:
- Likelihood of confusion;
- Merely descriptive or deceptively misdescriptive;
- Primarily geographically descriptive or geographically deceptively misdescriptive;
- Specimen does not support use;
- Primarily merely a surname; and
- Mark used in an ornamental manner.
Likelihood of Confusion
Refusal of registration due to the likelihood of confusion has to do with conflicting trademarks, which are often very similar marks. That is, the USPTO may refuse the registration of your mark because it is similar to an existing trademark. Such similarities can lead to consumer confusion, where individuals might mistakenly think that the purchased product or service originates from the same source. Marks can conflict even if they are not in the exact same international class but share similarities.
In these cases, the examining attorney will reject the application and notify the owner or applicant of the conflicting mark about the potential dispute.
Merely Descriptive or Deceptively Misdescriptive
Refusing registration on the grounds of being merely descriptive or deceptively misdescriptive involves the immediate description of the goods or services represented by the trademark. This description can refer to various things, such as an ingredients, features, quality, function, characteristics, or purpose of the goods or services.
Refusal due to a mark being merely descriptive occurs when a mark simply describes the good or service without adding any distinctive or unique elements. For instance, the mark “spicy” would be considered merely descriptive for a hot sauce.
On the flip side, refusal due to a mark being deceptively misdescriptive occurs when a mark misrepresents the goods or services it represents, leading to consumer confusion. An example of this would be using the mark “CBD lollipop” for regular sugar lollipops, which would be considered deceptively misdescriptive.
Primarily Geographically Descriptive or Geographically Deceptively Misdescriptive
The USPTO may reject the registration of a mark if it is deemed primarily geographically descriptive or geographically deceptively misdescriptive.
A mark is primarily geographically descriptive if it meets these criteria, according to the USPTO:
- The primary significance of the mark is a generally well-known geographic location.
- There is a likelihood that consumers would believe that the goods or services originate from the geographic location identified in the mark.
- The goods or services do indeed originate from the place identified in the mark.
For example, “Seattle TV Service” or “London Logs” are primarily geographically descriptive.
Refusal of registration on the basis of being geographically deceptively misdescriptive is based on the following factors according to the USPTO:
- The primary significance of the mark is a generally well-known geographic location.
- There is a likelihood that consumers would believe that the goods or services originate from the geographic location identified in the mark.
- The goods or services do NOT originate from the place identified in the mark.
- The misrepresentation would play a crucial role in influencing a significant portion of relevant consumers when deciding to purchase the goods or use the services.
For example, using the mark “Authentically Australian” for coffee that is not actually from Australia would be considered geographically deceptively misdescriptive.
Specimen Does Not Support Use
For a successful trademark application, you must show that your mark is used as a distinctive brand identifier. In other words, you need to show that your mark is used as a trademark. To show this, you must submit a “specimen” or sample of your mark being used as a trademark.
Registration can be refused because a specimen does not support use when one of the following occurs, as outlined by the USPTO:
- Your specimen does not show the trademark in your drawing.
- Your specimen does not show trademark use with the goods or services in your application.
- Your specimen does not show your own use of the trademark.
- Your specimen is not in actual use in commerce.
- Your specimen is not an appropriate type for your goods or services.
For example, if your trademark application specifies furniture as your goods, but the submitted specimen displays your mark promoting custom-built and assembled furniture services on your website, the specimen does not adequately support the claimed use.
Primarily Merely a Surname
Refusing registration because a mark is primarily a surname is straightforward: a last name cannot be trademarked since many people share the same surname. For example, “Smith’s” cannot be trademarked because it is primarily merely a surname.
Mark Used in an Ornamental Manner
Refusal of registration on the grounds of using a mark in an ornamental manner pertains to marks that serve a merely decorative purpose for the product being offered. In this case, the mark is seen as just a component of the product’s design and not a distinctive identifier of a brand. For example, if a mug has the phrase “Goodbye Summer” printed on it without the same phrase being used elsewhere on the mug, then “Goodbye Summer” might be considered merely decorative or ornamental in nature.
Trademark Registration Help Available Online
Trademarks and service marks are intellectual property protections for a business name, logo, brand name, slogan, and even distinctive sounds, smells, or visual imagery that distinguishes a business’s products and services. The 4 steps to trademark registration are: (1) clearance search and common law search; (2) preparing the registration application; (3) submitting the registration application; and (4) responding to the USPTO examiner.
You can register a name, logo, or slogan online from anywhere in the world. At Carson Patents, our USPTO licensed attorney helps individuals and businesses across the U.S. and worldwide successfully apply for trademark and service mark protection. Our team can guide you through the process of registering your trademark with the USPTO in the United States. If you already have a U.S. trademark, we can help you extend its registration internationally. Contact us for a free consultation to learn more about our trademarking services.
When seeking trademark protection, be cautious of scammers posing as attorneys or government agencies. Explore our trademark scam warning blog post to learn how to identify and avoid trademark scams.
