You know you need to do it. In fact, you know you should have done it a long time ago. But, you put it off for another day, and according to your calendar, that day is today. Instead of clicking that “Snooze – 2 weeks” option, take the following steps to get started with your trademark registration application today.
Determine What Your Trademark(s) Is/Are
The first step to apply for USPTO trademark registration is to determine what trademark or trademarks you need to protect. This can be straightforward, but it isn’t always. If you have a product name that is different than your company name, you’ve got at least one decision to make. If you have a design logo that incorporates words, do you want to protect the logo as a whole, or do you want to be able to protect the words in any context? The answer here is likely that you want to file two separate registration applications. If your trademark is also your domain name, do you want to (and should you) include “.com” in your trademark registration application?
Identify the Owner and Date of First Use of Your Trademark
You will also need to identify the owner of your trademark(s). If you operate your business without a corporation or LLC, then you are probably the owner of the trademark. If you have partners and/or operate as a business entity, you will need to decide which person or entity to name in the trademark registration application, and you may need to execute a simple trademark assignment agreement before the application goes on file.
The application form also requires you do disclose (i) the date you adopted the trademark, and (ii) the date you started using the trademark in commerce. You will need to certify the accuracy of your application, so be sure to research these and get them right before you file for trademark registration.
Identify Your Goods/Services
USPTO trademark registrations are limited to the “classes” of goods or services that you identify on the application form. The USPTO filing fees are $275 or $325 per class, so you need to understand and determine the scope of your trademark registration application before you file. While many entrepreneurs focus on limiting the filing fees (and understandably so), it may make more sense in the long run to file a comprehensive initial trademark registration application to protect and allow for expansion of your brand over time.
Save Samples of Your Trademark in Use
If you are already using your trademark in commerce (note: this is not required in order to file for trademark registration), you will need to submit a “Specimen of Use” along with your trademark registration application. What constitutes an acceptable specimen varies based upon your goods or services, but know in general that you will need more than just a .JPEG of your trademark. For most services, a website screenshot with contact information will be sufficient.
Hire a Trademark Lawyer to Perform Clearance Research and File the Application
Once you get these issues sorted out, the final step is to hire an experienced trademark attorney to perform trademark clearance research and file your trademark registration application. An experienced trademark attorney will be able to efficiently and effectively analyze whether any pre-existing trademarks might prevent your proposed registration, and will be able to ask the right questions and provide the appropriate information to prepare and file a USPTO trademark registration application that serves your immediate and long-term goals.
So, quit putting it off, and get your USPTO trademark registration application on file before someone else beats you to the punch.
Jeff Fabian helps business owners protect their intellectual property so that they can stay focused on running their businesses. Visit http://fabianip.com for more information, and follow Jeff on Twitter @FabianOnIP.
This article is provided for informational purposes only, and does not constitute legal advice.Subscribe to the Podcast