What to Know About Registering Your Trademark With the USPTO

Trademarks are vital for businesses and individuals looking to protect their brand identity. A trademark can be a word, phrase, symbol or design that distinguishes the source of goods or services. Protecting a trademark generally requires registering it with the US Patent and Trademark Office (USPTO). But prior to diving into the registration process, there are several preliminary matters and documentary requirements that should be considered.

Before applying, you should conduct a comprehensive search to ensure that your desired trademark is not already in use. Check the USPTO’s Trademark Search System for any existing marks that may be similar to yours. You should also search state databases and other resources, such as business directories, to uncover any marks that could pose a conflict.

You should determine at the onset whether your trademark is a standard character mark (word or phrase), a design mark (logo) or a combination of both. You should also put thought into why you believe your mark is distinctive. The USPTO categorizes marks by levels of distinctiveness, in increasing order of degree of protection: 

• Generic — These are common names of a product, which cannot be trademarked. 
• Descriptive — General descriptions of products are not inherently distinctive unless they have acquired secondary meanings through use over time.
• Suggestive — This means the mark implies a particular product. It can be distinctive depending on whether thought is required to connect it to the product.
• Arbitrary — This type of mark involves language that is used in an uncommon way, having no relation to the specific product.
• Fanciful — This is an invented word that is not a variant on a common term used to identify the product. It is inherently distinctive and entitled to the highest protection.

You can apply for a trademark online using the USPTO’s Trademark Electronic Application System (TEAS). You will need to choose between TEAS Plus, TEAS Standard or TEAS Reduced Fee, each with different requirements. Include a clear and concise description of the goods or services associated with your trademark. If you are already using the trademark, you must provide a specimen, which can be a label, packaging or advertisement.

If your trademark application is rejected, the USPTO issues an Office Action, which is a letter outlining the reasons. You can file a response that addresses the concerns raised, which may involve providing additional documentation, clarifying your application and/or amending your trademark description. You registration may then be reconsidered.

If your application is still denied, you can appeal the decision to the Trademark Trial and Appeal Board. Alternatively, if the rejection is based on a fundamental issue that cannot be resolved, you may consider withdrawing the application and reapplying after making necessary adjustments to your application or trademark.

An experienced trademark attorney can help you conduct thorough preliminary research, prepare the necessary documentation and navigate the registration process effectively, including responses to USPTO rejections.

The Law Offices of Donald W. Hudspeth P.C. in Phoenix takes an assertive, practical approach to establishing and defending trademark rights. To schedule a consultation with a knowledgeable trademark attorney, call our office today at 866-696-2033 or contact us online.