A trademark can protect your brand name and/or the logos you use in your business. You can generally register and use a business name without getting a trademark, as long as the name doesn’t infringe on other trademarks or business names. But entrepreneurs may want to file a trademark to identify the goods or services their business provides and to help avoid confusion in the marketplace.
Here’s what you need to know about getting a trademark for your business name.
Outline of the Trademark Process
The United States Patent and Trademark Office provides a lot of helpful information about trademarks on its website, USPTO.gov. Overall, the federal trademark registration process involves the following steps:
- Decide if you want a trademark (or servicemark for a service)
- Hire an attorney or do it yourself
- Choose a mark
- Identify your mark format
- Identify goods or services associated with your mark
- Check to make sure it isn’t already claimed by someone else
- Determine your filing basis
- Set up a USPTO.gov account
- File your application and pay the fee
- Monitor the application and respond to queries
- Get approved or denied
- Maintain the registration to keep it live
- Enforce your registration
If it sounds like a lot of work, that’s because it can be. Not all trademark applications are successful. You may need multiple trademarks for different goods or services. If you are successful, it’s up to you or your attorney acting on your behalf, to enforce your trademark. The government won’t do it for you.
The Benefits Of Registering A Trademark
The main benefit of trademark registration for your brand name is to clearly identify your business as the source of the products or services your business sells. If your business sells a certain type of beverage, for example, you can stop another business from selling beverages under a similar name. (Even if you can’t prevent someone from fraudulently doing so, you have a legal basis for stopping them.)
Whether it’s inadvertent use (the other business didn’t check to see if there was an existing trademark) or outright fraud or counterfeiting, a trademark can help you fight back.
If your application is successful (and you continue to maintain your mark registration), you will be able to use the registered trademark symbol in conjunction with the mark you’ve registered. This can prevent other businesses from using the same or too similar a name to sell goods or services for which you’ve obtained the trademark, and if they do, can give you the right to bring a lawsuit in federal court.
You can even file your trademark with the Customs and Border Patrol to help prevent counterfeit goods from being brought into the US.
What is Trademark Protection?
As mentioned earlier, generally a trademark is designed to protect brand names and logos used in conjunction with the sale of goods and services. For your current and prospective customers, it helps them know that your business is the source of those goods or services.
Imagine for a moment that we didn’t have a federal system for trademarks. While your business may still have some protection by using a trademark in a specific geographic area, it would be significantly harder to protect the use of your business name all across the U.S. It would be hard for other business owners to identify which trademarks were already in use, to avoid using them. It would be much more difficult and expensive for both existing businesses and startups to operate successfully.
However, there’s an important point to understand here. As the USPTO points out, a trademark does not mean you “legally own a particular word or phrase and can prevent others from using it.” Instead, it gives you rights when it comes to how that word or phrase is used in conjunction with your specific goods or services.
For example, Apple doesn’t own the word “apple” in all uses. It can’t stop businesses from using the word apple to sell fruit, for example. But its trademark does give it the exclusive rights to the brand name apple (as well as the design of the logo) for goods in specific categories related to the products it sells.
Obtaining trademark registration can prevent others from using the same business name (or even a similar trademark in certain cases) to sell the same goods or services as your business.
How to Apply for a Registered Trademark
You can file for a trademark yourself or you can hire a trademark attorney to help you through the process. Some services provide small business owners with legal advice and/or assistance with parts of the process. Note that if your business is foreign domiciled, you must be represented by a licensed U.S. attorney.
Note that here we are discussing federal trademark filings. You may be able to file your trademark in one or more states instead. However, if you want protection throughout the US (and you want that coveted registered mark symbol!) you will file for a federal trademark.
Even if you aren’t going to file for a trademark for your business, you should avoid trademark infringement, which could result in expensive lawsuits or force you to change your business name later.
When you choose your company name, or even a domain name, for example, it’s a good idea to search the Trademark Electronic Search System (TESS) to identify any potential issues. If you’re uncertain of the results, consult with an attorney before you register your fictitious name (DBA) with your Secretary of State.
If you decide to try to file your trademark application yourself, the U.S. Patent and Trademark office’s website provides a lot of tools and resources for researching and filing trademark applications, as well as information about other ways to protect the intellectual property of your business (such as copyrights). You can even take a free online course to help you understand the trademark application process.
A few tips:
Your trademark may be made of standard characters (for example, a business name not in a specific color, font, or size) or a special format with specific stylizing or design. The McDonald’s® golden arches are a popular example of this.
You can file your trademark application online using the Trademark Electronic Application System (TEAS). You’ll need to pay the applicable fees (below).
You must be sure to monitor your email for messages from the USPTO for questions or clarification. If your application is deemed abandoned there is an additional fee to reinstate it.
The Filing Fee Costs for Trademarks
The USPTO publishes the filing fees on its website. The current filing fees are:
|TEAS Plus filing fee per class of goods or services:||$250|
|TEAS standard filing fee per class of goods or services:||$350|
|Allegation of use form fee:||$100|
TEAS Plus sounds like the more advanced option, but it’s actually the simpler of the two. It can be used if you can file a complete application and your goods/services categories can be accurately found in the Trademark ID manual. Find out if you qualify for TEAS Plus here.
If not, you’ll need to file under the TEAS Standard option which is more expensive. If you file with the TEAS PLUS application and the USPTO determines you don’t qualify, you’ll have to pay the $100 difference.
If you are not already using the mark in commerce and file an intent-to-use application, you may incur additional fees:
- Request extension of time to show your use of the mark (not included in your original application): $125
- Showing use (not included in the original application): $100 per class.
If an application becomes abandoned there is a $150 fee to resume it.
It’s important to note that:
- If you have more than one mark, each mark requires a filing fee.
- If you file in more than one class of goods or services, each class of goods or services requires its own filing fee.
- Filing fees are NOT refundable if you are not successful.
If your application is successful, you’ll have to file a Section 8 declaration between the fifth and sixth year of registration. This will either indicate you are using it in commerce, or that you’re not but you have valid excuses as to why not.
There will be another filing required between the 9th and 10th year after registration.
These “after mark” registration fees are:
- Declaration of Use filing after 5 Years (section 8 declaration): $225 per class (if filed before the grace period);
- Declaration of Use filing after 5 years (section 8 declaration) combined with Declaration of Incontestability (section 15 declaration): $425 per class (if filed before the grace period);
- Declaration of Use filing and Application for Renewal every 10 years (Combined section 8 declaration and section 9 renewal): $525 per class (if filed before the grace period).
- Declaration of Incontestability filing (section 15 declaration): $200 per class.
Why Trademarks Are An Important Part of Selling and Financing Your Business
Securing a trademark can be one step in building a successful, long-lasting business. Just as building business credit can be valuable if you later decide to sell your business, trademarks can become a valuable asset that can help you sell your business for more money.
However, it can be expensive to secure trademarks, especially if you need them for multiple classes of goods or services. While trademarks are generally based on who uses them first, if you don’t file another business may, and it can be expensive to challenge that application. Your best bet, if possible, is to be the first to use the trademark and to file the trademark application.
Whether your business is a startup or established business, you may need to get financing so that you can pay for these and other expenses over time. A small business credit card, particularly one that offers a low APR, can provide short-term financing while a small business loan may offer short-term or long-term financing.