For trademark and service mark registration applications, we have our 4 steps to trademark registration process for seeking trademark registration for your business name, brand name, logo, slogan, or other distinctive sight, smell, or sound that you use to identify your products, goods, and services. Our 4 steps to trademark registration show how to apply to register for a trademark for a business name, brand name, logo, slogan, or other distinctive sight, smell, or sound.
We start with the trademark clearance search and common law search. If the mark is not already in use, then we write and file a trademark registration application. Trademark prosecution is responding to letters from the USPTO to address issues raised by the examiners in the application. Trademarks become registered when approved and added to the Principal or Supplemental Register by the USPTO. Carson Patents will work closely with you through the following 4 steps to pursue a trademark for your logo, brand, or business name. Contact us about any of the steps to trademarking for your logo, brand, slogan or business name.
Important Tip: It is advised to apply to register your mark broadly in order to allow flexibility. For example, by registering your logo in black and white, you are able to later change the colors for a season or event. Or, if you do not want to register a font, register your mark in “Standard Character Format” for font flexibility later on. Check out our trademark registration best practices article.
The 4 steps to trademark registration applications are: [1] the clearance search and common law search, [2] preparing the registration application, [3] submitting the registration application, and [4] responding to communications from the USPTO examiner.
Carson Patents®
4 Steps to Trademark – How to Apply to get a Trademark
4 Steps to Trademark Registration for a Name or Logo
Total Approximate Time 275 days
Business Name and Mark Use Search
The first step in our 4 steps to trademark registration applications is the search for any other businesses or persons that might be currently using the mark you are seeking to register. The clearance search and common law search is done searching the databases at the United States Patent and Trademark Office (USPTO) as well as state and international databases, and the internet generally. The clearance search is a USPTO trademark search. The common law search is an open internet search using a search engine (we recommend DuckDuckGo).
– Use the words and the images of your business name, brand name, logo, slogan, or other distinctive sight, smell, or sound for the search.
Tip: Use the image search engines to search for any images you intend to register to identify your services or products.
At the USPTO, searching is done in the USPTO’s Trademark Electronic Search System, or TESS. You can access TESS here. If the business includes foreign countries, you should also research the international database. Internationally, research is done at the World Intellectual Property Office’s (WIPO) Global Brand Database (GBD).
Tip: Before you apply to register your business name, brand name, logo, slogan, or other distinctive sight, smell, or sound, you need to be sure that it is not already being used. Only if it is not in use, should you proceed to the next step. If your mark is already in use, consider changing it. Alternatively, contact an experienced attorney to determine if there may still be potential to register the mark if the current use would not be confusing, or geographic areas are separable.
Prepare Trademark Registration Application
The second step in our 4 steps to trademark registration applications is to prepare for online filing. Preparing before you file will save you time and potential office actions from the USPTO that would require a response to fix the application.
– Be sure you have electronic copy (downloadable) of any images that are going to be registered.
TIP: Write good short descriptions for your logos and audio clips before filing. When filing registrations for logos and audio clips, you will need accurate short written descriptions when filling out the application online in this step.
– Be sure you have all the contact information for the owner (business or person) of the mark.
– Be sure you know the classes (business uses) that you want to register in.
TIP: If you do not yet know what class(es), research the appropriate class using the USPTO’s ID Manual. Conduct the research in ID Manual by searching for the product or service that your mark is used for. You can select and register multiple classes; however, there is a fee for each class.
After you are sure which class(es) to use, the last step of preparation is to be sure that you have an electronic copy of your proof of use in commerce. Evidence (proof) of you using the business name, logo, slogan, or audio clip in commerce can be a print out of your website or photos of signs, vehicles, buildings, menus, handouts, books, etc.
– Be sure you have evidence of your using the business name, brand name, logo, slogan, or other distinctive sight, smell, or sound in commerce (to do business).
Submit Trademark Registration Application
The third step in our 4 steps to trademark registration applications is to submit the registration application and pay the USPTO fling fee. To protect the mark in the United States, applications are submitted online using the USPTO’s Trademark Electronic Application System or TEAS. You can access TEAS here. Enter the information collected is step 2, and upload the electronic files in the sections where the application requests the uploads.
Once the application is filled out completely, double check the details and spelling before you submit. Once submitted, each application must be accompanied by a fee for each class requested. Pay the USPTO filing fee. Once submitted, the USPTO will email you a receipt. The receipt will have the reference numbers used to look up the application online.
Note: It can take a few days for the new application to be viewable online. This is common.
International Trademark Registration Note: Once a mark is registered in the U.S., it can be registered internationally at WIPO. The Madrid Application Assistant (MAA) for international trademark registration is maintained by WIPO. You can access MAA here.
Respond to USPTO Communications and Office Actions
The fourth and final step our 4 steps to trademark registration applications is to respond to any communications from the USPTO. If everything is submitted properly, meaning that the mark is unique and used in commerce to identify your brand and if everything checks out in the application, you will get a communication from the USPTO that they will or have registered your mark. Continue to respond to the maintenance and payment notices and you are set.
If something goes wrong and additional action is required, Carson Patents recommends contacting a trademark or intellectual property attorney to be sure you provide a complete and proper response. However, the letters from the examining attorneys are generally pretty self explanatory regarding how you can respond and continue to seek and get your mark(s) registered.
Estimated Cost: 350 USPTO TEAS Filling Fee
Supply:
- Business Name, Logo, Brand Name, Slogan, or other well known Sound, Smell, or Video Imagery.
Tools:
- Email Account
- Internet Connection
Materials: Ideally, you have proof you are using the business name, logo, slogan, and/or audio clip in commerce before applying to register. This can be hardcopy (product listing, menu) or online. If hardcopy, scan it or take a photo so you have an electronic copy. If online, go to the URL and print the screen or page to a *.pdf file so you have an electronic copy. You will also need any 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 get a trademark registered. The three requirements collectively are intended to show that you are using a distinctive mark in commerce to identify your brand. If these three requirements are met, your mark automatically has some trademark protection under the common law, and more importantly, it also becomes eligible for registration protection with the United States Patent and Trademark Office (USPTO). Before you start our 4 steps to trademark registration, be sure your mark meets the requirements.
Using the Mark as a Brand Identifier
The first requirement is ensuring that the mark is being used as a brand identifier. In other words, you need to be sure the mark is being used to identify the goods or services that your brand sells or provides, and it is not just decorative. Trade and service marks cannot be mere decoration. The purpose in using the mark should be to let your consumers know what business they’re buying the product from.
Having a Distinctive Mark for Your Brand
The second requirement is that the mark must be distinctive. In other words, the mark has to be unique and different enough to make it clear that the goods/services are from your company and not another company. Marks that are similar to marks of others may be found to be a potential source of confusion which can prevent your registration application from being allowed. The point of the distinction requirement is to ensure that there is not a source of confusion between your mark and the marks used by others. Check out 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. While it is possible to apply for registration of a trade or service mark before you use it, lack of use in commerce will get you an office action response from the USPTO examining attorney telling the registrant to submit the proof of use in commerce.
Potential Grounds for USPTO Registration Refusal
Our 4 steps to trademark registration work unless there are grounds for the USPTO to refuse the registration. There are at least five common reasons trademark registration applications are refused. The first step, searching, is used to research the likelihood of these grounds of refusal. The five most common trademark registration rejections are typically due to:
- Likelihood of confusion
- Merely descriptive
- Geographically descriptive
- Specimen does not support use
- Mark used in ornamental manner
Likelihood of Confusion
Registration refusal on the basis of likelihood of confusion has to do with conflicting trademarks. This can be marks that are extremely similar. Conflicting trademarks are not always in the same international class, but can be found in a similar class. This is sufficient enough to become conflicted. Consumers may become confused and mistakenly believe the product or service they purchased came from the same source.
The examining attorney will reject the application and inform the owner or applicant of the conflicting mark of the potential dispute.
Merely Descriptive or Deceptively Misdescriptive
Registration refusal on the basis of being merely descriptive or deceptively misdescriptive refers to immediate descriptions of the goods or services the trademark is representing. The description can refer to anything such as an ingredient, feature, quality, function, characteristic, or purpose of the goods or services. For example, the mark “spicy” would be considered merely descriptive for a hot sauce.
Registration refusal on the basis of being deceptively misdescriptive is the opposite. A mark that misdescribes the goods or services the trademark is representing causes confusion to consumers. An example of this would be using the mark “CBD lollipop” for regular sugar lollipops would be deceptively misdescriptive.
Geographically Descriptive or Deceptively Misdescriptive
According to the USPTO, registration refusal on the basis of being geographically descriptive is based on 3 factors:
- “The primary significance of the mark is a generally known geographic location;
- Purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark
- The mark identifies the geographic origin of the goods or services.”
EX: “Seattle TV Service” or “London Logs.”
According to the USPTO, registration refusal on the basis of being geographically deceptively misdescriptive is based on another 3 factors:
- “The primary significance of the mark is a generally known geographic location;
- Purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark,
- The goods or services do not originate in the place identified in the mark;
- The misrepresentation would be a material factor in a significant portion of the relevant consumers’ decision to buy the goods or use the services.”
EX: “Authentically Australian”
Specimen Does Not Support Use
Registration refusal on the basis of the specimen not being supported means one of 5 elements according to 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.”
Primarily Merely a Surname
Registration refusal on the basis of the primarily being a surname is as straightforward as it sounds. A last name cannot be trademarked as many people have the same surname.
EX: “Smith’s”
Mark Used in Ornamental Manner
Registration refusal on the basis of the mark being used in ornamental manner deals with marks that refer to a decorative feature of the product being offered.
Trademark Registration Help Available Online
Trademark and service marks are intellectual property protecting a business name, logo, brand name, slogan, or other well known sound, smell, or video imagery for 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.
Trademarks and service marks are used to protect business names, logos, and slogans. Getting a name, logo, or slogan registered is easy and can be done all online from anywhere around the world. If you have a mark registered in the United States, we can help you get it registered internationally. Also, once we get the business name, logo, and/or slogan registered in the United States, we can help you get that mark registered internationally as well.