Trademark Application Requirements
When starting a business, one of the most important steps you can take is to protect your brand with a trademark. However, the process of applying for a trademark can be daunting and complex. In this blog post, we’ll walk you through the essential trademark application requirements, explain why they matter, and show you how a professional trademark search company can help simplify the process and increase your chances of success.
When a business decides to file a federal trademark application, it’s taking a crucial step toward protecting its brand identity.
Federal Trademark Registration Benefits
The United States Patent and Trademark Office (USPTO) offers several benefits to businesses that successfully register their trademarks:
Public Notice
Your trademark is listed in the USPTO database of registered and pending trademarks. This public notice alerts anyone searching for similar trademarks that your trademark exists, along with details about the goods and services associated with it, the application date, and the registration date.
Legal Ownership
Registering your trademark with the USPTO creates a legal presumption that you own the trademark and have exclusive rights to use it. This simplifies legal proceedings, as your registration certificate serves as proof of ownership in federal court.
International Protection
Your federal trademark registration can serve as a basis for applying for trademark protection in foreign countries, helping you extend your brand’s reach globally.
Federal Lawsuits
A registered trademark gives you the right to bring a lawsuit concerning the trademark in federal court, providing a stronger legal standing in disputes.
Trademark Symbol
You can use the federal trademark registration symbol, ®, with your trademark, indicating that it is officially registered. This can deter others from using your trademark or one too similar to it.
Customs Protection
You can record your registration with U.S. Customs and Border Protection (CBP), which can help prevent the importation of goods that infringe on your trademark.
Understanding the significant advantages provided by the United States Patent and Trademark Office (USPTO) underscores the importance of registering your trademark. However, to fully reap these benefits, it’s crucial to navigate the trademark application process correctly. This involves meeting specific requirements set by the USPTO to ensure your application is complete and stands the best chance of approval.
Let’s delve into the six essential trademark application requirements to help you secure your brand’s legal protection.
The Six Essential Trademark Application Requirements
Filing for a trademark involves several critical steps to ensure your application is successful and your trademark is protected.
Here are the six main requirements you need to meet:
1. Conducting a Comprehensive Trademark Search
Before applying for a trademark, it’s crucial to perform a comprehensive trademark search to confirm that your chosen trademark is distinct and doesn’t infringe on existing trademarks.
A thorough search involves:
Federal Trademark Search
Examining the USPTO database for both registered and pending trademarks.
State Trademark Search
Checking state trademark databases, as many businesses only register at the state level.
Common Law Search
Exploring unregistered trademarks through business directories, industry publications, and online platforms. Common law trademark rights arise from the actual use of a trademark in commerce, even without formal registration.
The search process is not only about finding exact matches but also about identifying trademarks that are similar in Sound, Appearance, or Meaning.
Sound similarity plays a key role in determining if marks are confusingly similar, despite there being no “correct” pronunciation since public perception can vary.
The visual aspect of trademarks is also important; slight differences may not prevent confusion if the marks look alike.
Additionally, the meaning or connotation of a trademark is crucial, focusing on what the average consumer perceives when viewing the marks in relation to the associated goods or services.
It’s also necessary to consider related goods and services. These do not need to be identical; they just need to be related in a way that could confuse consumers about their origin.
Due to the complexity and significance of an exhaustive search, it is highly advisable to consult a professional trademark search company. Experts, such as TradeMark Express, can ensure that your search is thorough and precise, greatly reducing the risk of future legal complications.
2. Public Record of Application
Once you submit your trademark application, it becomes a public record.
Aside from payment details, all personal information you provide to the USPTO, including your address and email, will be accessible on the USPTO website and other sites that index USPTO data, like Google. This disclosure is mandated by law. There are few options available to keep certain personal information from being publicly displayed on the USPTO website.
3. Determining the Type of Trademark
You must choose the type of trademark you want to register. There are two options: a standard character trademark or a special form trademark. Your choice will influence the extent of protection you receive and the details you need to provide in your application.
Standard Character Trademark: This option requires minimal information.
Special Form Trademark: This option requires you to submit a JPG image of the trademark, a color claim, and a detailed description specifying where the colors appear in the trademark.
After submitting your application, you cannot switch to a different type of trademark or make significant changes to the trademark you submitted.
These significant changes are called “material alterations” –
Modifying the drawing of a trademark to the extent that it no longer appears to be essentially the same as the trademark in your original application or registration is not permitted. Changes that significantly alter the trademark are not allowed once the application has been submitted.
4. Identifying and Classifying Goods or Services
You must identify and classify the goods or services you are offering and can use the Trademark ID Manual to do so. The number of classes of goods or services you include in your application affects the cost of your application.
Once you file your initial application, you cannot expand the scope of your goods or services; you can only narrow or delete them.
5. Knowing Your Filing Basis
A filing basis is the legal foundation required to apply for a federal trademark registration in the United States.
In your application, you must indicate which filing basis, use in commerce or intent to use, you are using and fulfill the specific requirements associated with that basis.
6. Choosing Your Application Form
To submit your application, utilize the Trademark Electronic Application System (TEAS) for the initial filing. It is mandatory to file electronically.
There are two filing options available: TEAS Plus and TEAS Standard. The cost varies between these options because they have different upfront requirements.
TEAS Plus
The filing fee is $250 per class of goods or services. All application fees must be paid in full at the time of submitting your initial application. To identify your goods or services, you need to select from the Trademark Identification (ID) Manual. If the Manual does not accurately reflect your goods or services, you will need to use the TEAS Standard form.
TEAS Standard
The fee is $350 per class of goods or services. You are required to pay the filing fee for at least one class of goods or services when you submit your initial application, with the option to pay for additional classes later. With TEAS Standard, you have the flexibility to describe your goods and services yourself, making it essential to ensure that your description is precise and accurate.
Why You Should Consider a Professional Trademark Search Company
Navigating the trademark application requirements can be complex and time-consuming. A comprehensive trademark search is crucial to ensuring that your mark is available and unique. By using a professional trademark search company, you can significantly reduce the risk of legal issues and increase the chances of a successful application.
Protecting your brand is a vital step in establishing and growing your business. Ensuring that you meet all trademark application requirements is essential to safeguarding your brand identity and securing your business’s future. TradeMark Express can guide you through the process, ensuring that all requirements are met and that your application stands the best chance of approval.