What Are the Four Parts to Obtaining a Trademark?

by Marilyn Lindblad

Your trademark tells your customers that your products come from you. It distinguishes your goods and services from those of others. You can select a word, phrase, symbol, design or any combination of these elements to serve as your trademark. The strongest trademark is a fanciful, made-up word or image that is not confusingly similar to another party's goods. There are four basic steps to obtaining a trademark.

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Classification of Goods

The U.S. Patent and Trademark Office classifies trademarks according to the type of goods the mark covers. Therefore, the first step toward obtaining a trademark is to select the goods you will offer to the public; this will help determine the trademarks you can and cannot use. Generally speaking, you cannot use a trademark salad dressing that another trademark owner is already using for a spaghetti sauce. The two items are in the same class of goods, and selling them under the same trademark could confuse consumers as to which trademark owner makes the product.

Selection of the Mark

Another step toward obtaining a trademark is selecting the mark. Your trademark can be a word or phrase, a graphic or a combination of text and graphics. Trademarks vary in strength based on their distinctiveness. A weak trademark is descriptive, such as "Papa Vito's Pizza" for a pizza restaurant. A strong trademark is fanciful or suggestive, such as "Zing! Pizza." During the naming process, many business owners conduct a trademark search to make certain someone else is not already using the planned mark. Online search services are available to help you with this task, or you can conduct your own search on the PTO website, on search engines and in the marketplace.

Use in Commerce

Before the PTO will register a trademark, the trademark owner must use the trademark in commerce -- that is, in a commercial transaction. When you apply to register your trademark, you must state the date when you first used your trademark in commerce. You can prove use with an order form, an invoice for the sale of a trademarked item, or a copy of a receipt for the purchase of a trademarked item. Creating an Internet domain name that uses the trademark can fulfill the requirement of first use if the domain name's website offers trademarked goods for sale. One token sale does not fulfill the requirement of use in commerce. The trademarked goods must be continuously used in commerce to preserve the owner's trademark rights.

Registration

After the trademark user selects his goods or services, chooses his trademark and uses the mark in commerce, he may file an application to obtain a federal trademark registration. The registrant may file electronically on the PTO website, or he may use an online legal document preparation service to streamline the process. A federal registration enters the trademark in a national database and informs others who may want to register the same word or design that the trademark is already registered. After registration, the owner may use a registration mark, an "R" inside a circle, with his trademark.