How To File A Trademark – Step By Step

How To File A Trademark

If you are reading this, you are probably have asked yourself all ready, “Do I really need a trademark lawyer to file a trademark application?” Well, the short answer is –  “No, you do not need a trademark lawyer to file your trademark application.” Many of you may sigh with relief right now, but bare in mind, there are some stipulations accompanying this short answer.

For starters, to file a trademark is not like coloring in a color book – it’s requires some thought, knowledge, focus and preparation. Below we outlined the steps for the trademark application so you can familiarize yourself with what to expect and decide how to best prepare yourself to file your own trademark.

1. Come up with something strong (distinctive) to trademark.

For starters, you cannot just trademark anything. The mark will have to prove that it indeed distinguishes your product or service from your competition. See the “Spectrum of Distinctiveness” chart below to determine what makes your mark distinctive. Remember this as a rule of thumb – the more distinctive your mark, the more eligible it is to trademark.

Spectrum-of-disctinctiveness

2. Trademark search

You will want to conduct a trademark search to see if the mark or word mark you have chosen is available to trademark. Trademarkia.com offers a free trademark search where you can search against trademarks filed in the U.S. and internationally. If your word or mark happens to be available to trademark, you will be prompted to apply. In the worst case, the word or mark you are trying to go for could all ready be registered by someone else. It can be kind of disappointing to find this out but it is better later than never – just go back to the drawing board and, with a little trial and error,  you will find one that works.

 3. Determine if you are trademarking a logo, slogan or name

The trademark application requires you determine whether you’re applying to trademark a logo, slogan or name so just be sure you know the difference. A “logo” is an image mark used to identify your product or service, a “name” is a word mark used to identify your product or service and a slogan is a short phrase or sentence that is used to distinguish your product or service.

Logo Example: Apple’s apple logo

Name Example: “Intel”

Slogan Example: “Think outside the bun” for Taco Bell

4. Prepare your “proof of use”

Your proof of use is a real-world example as to how your name, logo or slogan will be used in association with the goods or services that you offer. Some acceptable items to submit for your proof of use include labels, tags, containers, web site screen shots…etc. You should also know the earliest date that you began using your mark in commerce.

If you are not yet using the name, logo or slogan in business, you can still submit the trademark application with just an explanation on how you plan to use the mark. In order for your trademark to fully register though,  you must eventually submit the proof of use (within 3-12 months).

5. Decide to file as an individual or an organization

You can file as either an individual or an organization. If you decide to file as an individual, decide whether there be any other owners besides yourself. Make sure you have all of their information with accurate spellings. If you file as an organization, again make sure to have all accurate spellings and know which entity type your business is.

6. Decide on how you want to classify your trademark.

You will need to determine what kind of product or service you are offering in order to determine how to classify your trademark. For example, is your product or service a chemical products, wine and spirit products or clothing products? The application will give you a list of all the many possible classes for you to choose from. Be sure to choose all the classes you wish to classify your trademark under. This is important because you can enforce your trademark in only the classes that you select.

7. Determine what countries you want to file you trademark in

There are many reasons why you may want to file in other countries outside the country you reside in. Maybe you do international business or maybe you highly suspect your product will become popular abroad? These are both great reasons to file in another country. Explore the many reasons why someone may want to file an international trademark here.

8. Start the application process

You can choose to shovel paper work but there are now easy-to-use web application that can make the trademark application process a lot simpler. Trademarkia.com, for example, offers a simple, easy to use work flow that guides you smoothly through the application process. The application can take about 15 minutes so set aside some quite time to complete this. As you go along the workflow and you cannot answer specific questions immediately, you can save your work and come back to it once you have it prepared.

9. Hire an attorney (optional)

If you are concerned about your mark being registered, having trouble filing your trademark application yourself or if you are worried about the chances that your trademark may be conflicting with other marks, hire an attorney. Sometimes the stress is just not worth it if you are having trouble. An attorney doesn’t always have to break the bank either.

With Trademarkia, the Trademark Gold – Comprehensive package will give you the basic assistance that you need. It is a package built specifically tailored to assist people through the trademark application process. The attorneys have filed numerous trademarks and are experts in their field. You will be given a consultation and have assistance along the way as you go through the application process.

10. Respond to any office actions

After you submit your trademark application, you may not completely done just yet. Applicants must respond to any office actions in a timely manner or risk the trademark being abandoned. Just be sure to be patiently waiting and checking in to see that your trademark went smoothly. Keep in mind the trademark application can take roughly one year before you might receive any notice that your trademark was approved.

11. Congrats! Your trademark registers

Congratulations your trademark is registered!  Now that you invested in your brand be sure to monitor your mark to make sure no one is infringing on your brand. Here are three tools that are great for monitoring your brand online. Also be sure to take the necessary steps if you notice someone has stolen your brand.

12. Renew your trademark

Every 10 years you must apply to renew your trademark. Mark your calendars!


This article presents the views of the author and do not necessarily reflect those of LegalForce RAPC or its clients.  The information presented is general information and for educational purposes.  No legal advice is intended to be conveyed; readers should consult with legal counsel with respect to any legal advice they require related to the subject matter of the article.

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