The Trademark Registration Process, for Small Businesses

A lot of services that help you set up an LLC or corporation will offer to help you file a trademark application too. But, if you’ve read our trademark basics article and you’re in the US, you know that you don’t always have to file for a registration right away. Still, once your business gets going, it’s a good idea to register at least your main trademark. This article gives you a quick overview of the trademark registration process. This way, when you’re ready to file, you’ll know what to expect.

This article is a part of our how to run a creator business series. But the trademark registration process applies to all businesses, big or small, creator-focused or not. Also, most of our readers are in the US. So, we’ll focus on the US trademark registration process.

Should You File a for Federal Trademark Registration or a State Trademark Registration?

In the US, you can register a trademark either with a state or with the federal government. A state registration only protects the mark in that state. A federal registration will protect the mark across all states.

There can be limited strategic reasons to register a mark only with a state. But, most of the time, a federal registration makes the most sense.

Once you have a federal registration, you won’t need a state registration.

This article focuses on the federal trademark registration process.

Before Filing Your Trademark Application, Get a Trademark Search

Before starting the trademark registration process, it’s best to make sure no one else can prevent you from getting a registration. You don’t want to waste time or money just to be rejected in the end.

So, before filing your trademark application, it’s smart to do a quick trademark search. You can do this yourself for free. We explained how to do a simple trademark knock-out search in an earlier article. You can narrow the marks that might be registerable to just one or two.

Then, we recommend you hire a trademark lawyer and pay for a professional search. The search probably will look at more places than your DIY search, so it will be more thorough. A trademark lawyer will then tell you if they think your mark is registerable or if you should look for another mark.

The trademark report itself costs a few hundred dollars. It’ll often include hundreds of marks that are arguably same or similar and used on same or similar goods or services. But the report itself isn’t valuable. You’ll need a lawyer’s analysis of the report to make sense of everything. The analysis can cost $1,000 or more.

Two Types of Trademark Applications: ITU and Actual Use

Trademark rights in the US come with using the mark in commerce. So, a “regular” trademark application can be filed only after you’ve used the mark in commerce.

But there is another type of application called an intent-to-use (ITU) application. The ITU application lets you reserve a mark for up to 3-4 years before you absolutely must use it in commerce or abandon the application.

An ITU application goes through the same examining process as a regular application. But, once the application is allowed, you have to file an additional notice to tell the Trademark Office that you’ve used the mark in commerce. Only then is the trademark registration process complete and your trademark formally registered.

How Much Does a Trademark Application and the Trademark Registration Process Cost?

The cost of a trademark application depends on several factors. The filing fee starts at $250 and goes up from there. The entire trademark registration process can cost more, depending if you use a lawyer’s help and if you need to file more paperwork with the Trademark Office.

An ITU application tends to cost more than a regular application. This is because you’ll need to file various documents after the initial application to tell the Trademark Office that you’ve started to use your mark or to ask for more time to use your mark. Each filing comes with a fee.

Trademarks are used in connection with goods or services. Your application fee depends on how many types of goods or services you’re using with your mark. For each “class” of goods or service, add $250 or $350, depending on the type of application you file.

To get the $250 application fee, you’ll have to submit a lot of information with your application. You might not know how to deal with the information the Trademark Office asks for. With the $350 application, you can provide less information. We think most people will file the $350 application.

Most trademark applications are filed electronically these days. You can still submit a paper application, but the application fee costs a lot more.

For more details, here’s the trademark filing fees page from the US Trademark Office.

These costs are just for the application fees. If you get a lawyer’s help—which we recommend you do—you’ll have to pay the lawyer’s fees as well. Most IP law firms can give you a standard price for filing a trademark application. Expect it to be between $1,000 to $2,000.

The Trademark Application Itself is Deceptively Simple

The actual trademark application is very short. Some law firms have their own format, but it basically looks like a form you fill out with some information about the mark and how you’re going to use the mark. But don’t let this fool you.

The description of the goods or services you’re using or will use with the mark can be tricky. An experienced trademark attorney can sometimes broaden your rights through the description. Or they might steer you away from a possible conflict with another application or registration. This is why we think it’s always better to hire an attorney to help you with an application instead of doing it yourself.

You Will Need to File Specimen of Use

Going back to the principle that trademark rights come with use, you’ll need to show the Trademark Office some evidence that you’ve actually used your mark. This evidence is called a specimen of use. With an actual use application, you submit the evidence with your application. With an ITU application, you submit the evidence once you’ve actually used your mark.

For trademarks used on goods, the most common specimen of use is some sort of packaging or photo of the mark on the actual goods.

For trademarks used on services, the most common specimen of use is advertising for the services.

However, things can get tricky for online goods (e.g. software) or services (e.g. online store). A creator will probably have to submit a mark that’s used solely online as well.

The Trademark Office has a large section in their Trademark Manual of Examining Procedures on what is and is not an acceptable specimen of use for online goods or services. An experienced trademark attorney will know how to help you navigate through it.

What Happens After You Submit Your Trademark Application

When you submit a trademark application, you go through an examination process that takes a year or two. The Trademark Office will look at your mark and decide if your mark interferes with the rights of other marks that are already registered or are ahead of you in the application process. They will also make sure you’ve satisfied the technical requirements of a registration, requirements such as whether you’ve properly used the mark in commerce.

Your application might be rejected, but that is fairly normal. The best way to deal with the rejection is to hire a trademark lawyer to write a response to the rejection.

Sometimes, the rejection is pretty simple (e.g. you’re trademarking your name and you have to affirmatively give permission). If that’s the case, the examining attorney will send you an Office Action rejecting your mark. But they’ll also often include suggested wording that you can agree to, to make the application proper.

You can call the examining attorney to accept their wording, and they’ll often help you through the process. Sometimes, they will note in the file that you gave verbal permission to make the required changes to the application. Then, they will make the changes and approve the application.

If your application passes the examination process, it’ll be published to see if other trademark owners object to the registration of your mark. Normally, you won’t get any objections. If you do get an objection, a trademark lawyer can help you through the process.

Should You Start Your Trademark Registration Process in Other Countries?

When you file a trademark application in the US, you also have the option of filing that application internationally. The international application is called a Madrid Protocol application.

The Madrid Protocol covers 124 countries as of this writing. So, filing this one application potentially covers all 124 countries. The application will give you one filing date, which sometimes means you can prevent squatters trying to get rights to your trademark in any one of the 124 countries.

A Madrid Protocol application can simplify the international trademark application process. But, eventually, you’ll still have to go into specific countries to file individual applications to get a trademark registration for that country.

Here’s a page from the US Patent and Trademark Office explaining the Madrid Protocol a little further.

If you don’t file your application through the Madrid Protocol, you can always start individual trademark registration processes later in specific countries.

The Madrid Protocol is really intended for businesses that sell internationally. Most creator businesses won’t need international applications even though some of your followers might be from different countries.

Maintaining Your Trademark Registration

Once your trademark registers, there are things you have to do to maintain your registration. First and foremost, you have to keep using the mark in commerce. If you stop using it, then you lose your rights.

At various points during the lifetime of your trademark registration, you have to file other paperwork with the Trademark Office. You can file something called the Declaration of Incontestability after 5 years of continuous use. This will make various aspects of your trademark registration stronger under the law. And every 10 years you have to renew the registration of the mark, or you lose the registration.

You’ll also have to enforce your mark. That is to say, once you have a registration for your mark to be used with certain goods or services, you have the exclusive right to use the mark on those goods or services. But it’s up to you to keep your use exclusive.

So, you have to make sure no one uses your mark without your permission. You do this either by asking others to stop, file a lawsuit to make them stop, or license your mark to other users so their use is a use permitted by you.

Trademarks are an Important Business Asset and a Trademark Registration Adds to the Business’s Value

In the US, your trademark rights come with use. This means that, as long as you’re using your mark, it’s not always necessary for you to register your trademark—at least not right away.

Still, a trademark registration has a lot of uses. For one, it’s a great way to tell everyone that you claim trademark rights to the word, phrase, logo, etc. For another, if you ever have to enforce your rights, it’s a lot easier if you have a trademark registration. Finally, if you ever plan to sell your business, a registration is something concrete that you can negotiate a price for.

So, even though it’s not strictly necessary for every business to go through the trademark registration process and get a trademark registration, we think it’s a good idea to eventually get one. Most small businesses don’t survive the first few years. But once your business becomes stable and you know you can keep it going for a while, seriously consider filing one or more trademark applications for your business. You won’t regret it.

But, even though a trademark gives you a lot of rights, there are limits to these rights. These limits are often called trademark fair use.

We’ll explore trademark fair use in our next article:

Trademark Fair Use, for Creators

Interested in starting and running a small business? Here’s the beginning of our step-by-step guide: What to do right after getting that great business idea.

DISCLAIMER: This article does not constitute legal or accounting advice. Instead, it contains general information. The information gives you the background you’ll need to hit the ground running when you do go get advice from a lawyer or accountant. Only lawyers and accountants properly licensed in your state/country are qualified to give you legal or accounting advice.