You’ve picked a name, searched for con­flicts, and deter­mined that your trade­mark is dis­tinct and is not likely to cause con­fu­sion with any other trademark. Does this mean that you’re ready to reg­is­ter it with the USPTO? Not yet. You need to con­sider whether you need the ben­e­fits of fed­eral registration.

Remem­ber, you auto­mat­i­cally gain trade­mark rights in all the loca­tions where you use it first. If you mar­ket your prod­ucts to the nation on the internet, this might auto­mat­i­cally qual­ify you for those rights. But even if this is the case, there are advan­tages to reg­is­ter­ing your mark with the USPTO.

The ben­e­fits of reg­is­ter­ing your trade­mark are as follows:

  • You gain exclu­sive nation­wide rights to the mark. (Except for those ter­ri­to­ries where some­one used the mark before you did.)
  • You get to place the ® sym­bol after your mark.
  • Your trade­mark appears in the USPTO data­base for oth­ers see which might thwart would-be infringers.
  • You give offi­cial notice to every­one that the trade­mark is unavailable.
  • You get to immu­nize the trade­mark once five years have elapsed from its registration.
  • You stand a greater chance of win­ning an infringe­ment lawsuit.

If you decide that you want these ben­e­fits, then you have to actu­ally use the trade­mark in com­merce. If the mark involves goods, then this means that you’ve shipped your goods to a store to be sold or sold them in your own store. If the mark is attached to ser­vices, it means that you’ve mar­keted your ser­vices under the trade­mark and can deliver the ser­vices to your cus­tomer. If you haven’t used the trade­mark yet in com­merce, you may file an intent-to-use application.

If you used the mark in com­merce, then it must be used in com­merce that Con­gress reg­u­lates. This means you shipped your prod­uct across state, territorial, or inter­na­tional bound­aries. It also means that you’ve adver­tised your ser­vices out­side your state, used the mark to con­ducts ser­vices across state lines (ecom­merce, con­sult­ing via phone to out-of-state res­i­dent, etc.), or used the mark in ser­vices in more than one state, ter­ri­tory, or coun­try. If you haven’t used the mark in inter­state com­merce, but intend to do so, you may file an intent to use appli­ca­tion. Now you’re ready to file the appli­ca­tion with the USPTO.

Before you do, you need to gather some infor­ma­tion. It will make the process much eas­ier. You’ll need:

  • The date you first used the mark in com­merce that Con­gress regulates.
  • The party who will own the trade­mark (you per­son­ally or your company).
  • A spec­i­men show­ing how the mark is used: For goods: a photo of labels, tags, con­tain­ers show­ing the mark (don’t use adver­tis­ing mate­ri­als, price lists, inter­nal com­pany doc­u­ments, cat­a­logs, press releases). For ser­vices – a scanned copy of brochures, bill­boards, direct mail pieces, menus, advertis­ing and mar­ket­ing mate­ri­als, let­ter­head sta­tion­ary and busi­ness cards, screen­shot of a full web a page (don’t use news releases, invoices, pack­ing slips, or doc­u­ments only show­ing trade name). A graphic file if you’re fil­ing a styl­ized mark (a word in a spe­cific graphic man­ner) or design mark.
  • Your inter­na­tional class selec­tion. (The USPTO uses a sys­tem of descrip­tive cat­e­gories of goods or ser­vices to keep track of reg­is­tered marks. There are 45 classes in all. You can find these on the USPTO website.)
  • Your dis­claimers. You may dis­claim generic or non-distinctive parts of your trade­mark such as the word pizza.

If you’re reg­is­ter­ing a name com­bined with an unusual type­face, you should file an appli­ca­tion for the unadorned word and another for the adorned name. If money is an object, then reg­is­ter the unadorned name. If you use your name with a graphic image, you should reg­is­ter the name and the name com­bined with the graphic image. If money is an object, then file the name com­bined with the graphic image. If the graphic is not dis­tinc­tive, then reg­is­ter the name by itself.

With this infor­ma­tion in hand you’re finally ready to reg­is­ter your trade­mark. You can either do this online or you can file hard copies. It will cost you $325 to file online (you can file an appli­ca­tion for $275 with some pre-filled infor­ma­tion) and $375 for paper fil­ing for each inter­na­tional class. When you fin­ish the appli­ca­tion, you wait.

An exam­iner will typ­i­cally con­tact you within three to six months of fil­ing. If there’s a prob­lem with your appli­ca­tion, you’ll receive an action let­ter explain­ing the prob­lem. You often can fix the prob­lem with a phone call to the exam­iner. When the exam­iner approves your appli­ca­tion, you’ll receive a notice of pub­li­ca­tion. Any­one can oppose your reg­is­tra­tion for 30 days after your reg­is­tra­tion (only 3% of marks are opposed). If no one opposes the reg­is­tra­tion, you’ll receive a cer­tifi­cate of reg­is­tra­tion. Dur­ing this process you might get one of three rejec­tion letters:

  • Tech­ni­cal rejec­tions such as incor­rect appli­cant name, ambigu­ous author­ity, class iden­ti­fi­ca­tion prob­lems (you can nor­mally fix these prob­lems through an amendment).
  • Sub­stan­tive rejec­tions such as a deter­mi­na­tion that the mark is generic or merely descrip­tive or will likely be con­fused with another mark (a response takes more effort and may require help from an attorney).
  • Final rejec­tions are received nor­mally after you’ve had a chance to respond to the other two rejections.

If you don’t want to fight a rejec­tion or if you receive a final rejec­tion, you may always aban­don your appli­ca­tion or appeal the decision.