How to Trademark Something

By Michelle Kaminsky

How to Trademark Something

By Michelle Kaminsky

A trademark can be an invaluable asset as it protects your rights in a mark, symbol, or combination of words that identify your product or service. A trademark confirms for the consumer the source of products or services. Some of the most famous trademarks include the Nike swoosh, the McDonald's Golden Arches, and Google's rainbow-colored textual logo.

To receive full protection for a trademark across the country—including the right to sue in federal court for infringement—and also qualify for international protection, you must register your trademark with the U.S. Patent and Trademark Office (USPTO).

Here are the steps for how to register a trademark with the USPTO.

1. Choose Your Proposed Trademark

When deciding on the mark, symbol, or combination of words, you will trademark, you must be sure that your selection is nongeneric. The USPTO will not grant trademark protection to generic phrases because this would run counter to the purpose of trademarks, which is to assure the consumer that certain goods or services come from a specific source.

You could not, for example, trademark apples as Apples, but Apple used as a name for computers is nongeneric as computers have nothing to do with the usual meaning of the fruit.

2. Search the Trademark Electronic Search System (TESS)

The USPTO provides an online database of registered trademarks so you can be sure that your potential trademark isn't already in use or too similar to the one that's been registered. Once you've settled on your proposed trademark, you should do a comprehensive TESS search for identical or similar trademarks.

If you find a registered trademark very similar to your proposed trademark — especially one in the same general category of goods or services — you should make yours more distinctive. This can save you both time and money as you run less of a risk of having your trademark application rejected.

3. Draft a Description of Your Goods or Services

When applying for a trademark, you must include a short description (about a paragraph or so) that describes your goods or services. This text will be associated with your proposed trademark.

4. Choose Your Trademark's Classification

The USPTO classifies goods and services by codes in its "Acceptable Identification of Goods and Services Manual." The office lists 45 categories, which include goods from clothing to paper, and services from food to education and entertainment.

Keep in mind that some trademarks may cover more than one category. For instance, an internet-based apparel store may seek a trademark under classes for clothing, advertising and business, and shipping and travel.

5. Create an Image of Your Proposed Trademark

Whether it's a logo, words, or wording and design combined, you must send the USPTO a digital file of your proposed trademark. A jpeg file is best.

6. Fill Out and File the Trademark Application

You can complete an online trademark application through the USPTO's Trademark Electronic Application System (TEAS) using the information you've gathered in the previous steps. To complete the application, you need to pay a fee and provide additional personal information, such as your name, your business's name, and contact information.

Within a few months, you should get a response from the USPTO regarding whether you have been granted the trademark. If the examiner finds an issue with your application, you will be notified through an Office Action. You have six months to reply and correct the problem, if possible. If you do not reply within the allotted time frame, your application is considered abandoned.

When your trademark is approved, it is published in the "Official Gazette," which gives others 30 days to object. If no one objects, you will receive a trademark certificate.

After the USPTO grants your trademark, you must renew it between the fifth and sixth year after registration to receive continued protection. Beyond that, you must again renew between the ninth and tenth year, and then every 10 years after that. Renewals require additional filing fees.

Once you have your trademark, you must continue to use it in commerce or have an acceptable reason for nonuse—and keep an eye out for a potential infringement.

This portion of the site is for informational purposes only. The content is not legal advice. The statements and opinions are the expression of author, not LegalZoom, and have not been evaluated by LegalZoom for accuracy, completeness, or changes in the law.