Trademark tactics: how to register and trademark your brand name

What is a trademark?

Starting from the top, a trademark identifies a product or service as coming from a particular source. You can register a trademark for things like a company name, tagline, logo, or even a radio or television jingle.

Trademarks can either be “common law” or registered trademarks, and there are two key differences to keep in mind:

• Common law trademarks protect a business’s rights only in the geographic areas where the business is using the name, slogan, logo, or jingle.
• On the other hand, registered trademarks can be used to protect your brand all over the country.

It’s important to distinguish between a registered trademark — which is only obtainable in the US through the United States Patent and Trademark Office (USPTO) — and a registered business name. When you form your company’s LLC, or even if you decide to operate as a sole proprietorship and use a fictitious name (also known as a DBA, or “doing business as” name), you register your business’s name with your state — and might even register in several states. However, you only have a registered trademark if you register through the USPTO.

What are the different trademark types?

There are four different types of trademarks.

• Descriptive marks describe an element (or several elements) of a product or service. If you own a coffee shop, you could use the descriptive mark “Hot, Fresh, and Always Ready.” Although it may be true of your product and can be used as part of your brand promise and marketing efforts, this sort of mark is not usually granted trademark protection. The reason why is It’s too general and can apply to too many products.

• Suggestive marks are stronger than descriptive marks, but they still might not be unique enough to be eligible for a trademark. Although they don’t express it directly, suggestive marks imply a meaning. For example, the red, concentric circles of the Target logo are a well-known example of a suggestive mark.Continuing with the coffee shop example, let’s say you decide to create a logo of a coffee cup with a halo and wings, floating in the clouds. You might be able to make a good case that this mark is unique enough to be trademarked, but there are two marks that hold even more weight in this process.

• Arbitrary marks consist of a word or words that have a common meaning that is not related to the product or service being trademarked. If you choose to use an arbitrary mark for your business, consumers have to be taught to associate the mark with your company or product — and it can take some time before customers associate the trademark with your brand.Among the arbitrary marks that most consumers know by heart include Apple (technology), Zest (soap), and Amazon (retail), just to name a few. For our fictitious coffee shop, we could try to trademark “Heavenly” and relate it to our suggestive mark of the coffee cup by including an image of a halo and wings.

• Fanciful marks are made-up words, phrases, or logos that don’t exist elsewhere outside of your brand. They are thought to be the most powerful and easiest to register of the available options. Nike and Reebok are two well-known examples of fanciful trademarks.So, going back to our example of using “Heavenly” for our coffee shop’s name, we could consider creating a new name from other existing words and brainstorm an original term. One possibility is to trademark a name like “Celestioffe,” a combination of “celestial” and “coffee.”

When pursuing a trademark for your business, a good rule of thumb is to focus on marks that are either arbitrary or fanciful. Here’s why:

• Both increase the likelihood of having your trademark approved.
• If a competitor tries to infringe on your trademark, it will be easier to prove it.

Now that we’ve had a primer on the different types of trademarks, it’s important to go over some of the protections that come with them.

Local vs. federal trademarks

A registered trademark — obtainable through the USPTO — is the only federal trademark in the US, and it’s considered the strongest. Have you ever noticed the letter ® following a brand name or logo on a product or in a commercial? This symbol denotes a registered trademark.

Also, your brand can get limited protection from two local or regional trademarks.

Common law 

The most common of these unregistered trademarks is denoted by the symbol ™ and is used for common law trademarks. Furthermore, a common law trademark is created by consistently using a word, logo, or other mark, and you can make a claim of infringement if a competitor starts using the same mark for their brand.

State registration

State registration of your business’s name is the most local and limited protection. This sort of protection is created by registering with the secretary of state — or the equivalent office — in each state where you plan to conduct business.

Most small businesses are adequately protected by state registration or common law trademark registration. And there can be benefits to choosing one of these local options:

• Ease of the application process
• Speed of approval
• Minimal cost
• Limited scope of distribution or service

From corporate identity to brand protection, it can make sense to add getting a trademark as a task to your to-do list, but not all business owners choose to go down this route.

When should you register a trademark for your name?

While applying for a trademark is entirely at a business’s discretion, there could be times when a company’s decision-makers see it as a necessary step in the company’s growth. For example, obtaining a registered trademark for your brand name (and other identifying elements of your brand) can be beneficial if you plan to operate nationwide. In addition, it can prevent infringement as the organization’s brand and messaging enter new markets.

It can also be worthwhile to undergo the trademarking process if you have a unique name, slogan, logo, brand colors, or other marks. But most businesses won’t need to go to the lengths of registering their trademark with the USPTO, at least not right away.

So we’ve talked about some basics around when to register and the different trademark types, next, we’ll cover some of the advantages and drawbacks of registering for one.

Pros and cons of obtaining a registered trademark

Before you apply for a registered trademark, it’s a good idea to have a grasp on some of the pros and cons that come with the process.

Another potential tick in the “cons” column to consider: although you can file for a registered trademark without an attorney’s help, it might be beneficial to work with one to make sure the application is completed correctly. Though it means coming out of pocket a bit more, it is especially important if you need to file for multiple classes of goods and services. The takeaway is that even though attorney fees can range from a few hundred to thousands of dollars, knowing the process is in the hands of a professional can provide peace of mind.

So now that we know a bit more about the pluses and minuses of filing for a trademark, let’s discuss the steps that are involved.

Steps to trademark your company name

What happens next if you decide to complete the application process on your own? You can apply for a registered trademark directly through the USPTO website. Take some time to review the “first-timer” information provided, as it can be a big help when choosing the right Trademark Electronic Application System (TEAS) form to file (which in turn will save you time and money).

Once you have figured out which forms you need to file, you are officially ready to start the trademark application process.

Step 1: Do a trademark search

Before you get too invested in your mark — be it a name, logo, or other fanciful or arbitrary mark — run a trademark search to make sure no one else has registered a mark similar to yours. If you find another registered mark that is substantially similar to yours, you need to rethink your mark before taking the next step. Otherwise, you run the risk of your application being rejected.

You can (and should) conduct a trademark search on the USPTO website, but don’t forget to look into other databases that may contain trademark information. These databases include state registries, domain name registries, and trade directories.

Step 2: Finalize your mark

Once you’ve determined no one else has registered your mark, make any finishing touches to it. Make sure colors, fonts, spelling, and other identifiable traits are consistent.

Step 3: File your trademark application

Although you can file a paper application, you will save time and money by filing online at the USPTO website. Moreover, filing online will also make it easier for you to track your application status. To do this, create an account a MYUSPTO account (which should only take a minute), as the required fields are:

• Email
• First and last name
• Phone

Step 4: Monitor your application status

After completing your application, patience is key as there can be some back and forth once the review process starts. That’s because once the ball starts rolling, your application examiner might have questions about information you’ve provided, or they might need you to make one or two changes. Remember that an application examiner can be working on a high volume of files at any given time, so a prompt reply can go a long way to keeping your file moving forward.

Moreover, a delay in answering a request could slow down things down and failure to meet a response deadline could even prevent an application from being approved. So be sure keep a an eye on your application status and any follow-up correspondence after filing.

Step 5: Receive your trademark registration

Once your examiner has cleared your trademark application, the finish line is in sight, as it will be published in the “Trademark Official Gazette” (TMOG). Published each Tuesday, this electronic publication lists new, canceled, and renewed trademarks. When your mark is published, you will need to do two things:

1. Review your mark for accuracy. If anything needs to be corrected, you’ll need to file a post-publication amendment form.
2. Be on the lookout for any notifications of objections to your trademark. Other trademark holders have 30 days from the date your mark is published in TMOG to file an objection to your mark.

Assuming your trademark is accurate as published and no claims arise that it infringes on someone elses, you will receive a certificate of registration for your trademark and can start using the registered trademark symbol ®. Make sure you file your first maintenance documents within two months of receiving your registration.

Now that covered a high-level overview of how to apply for a trademark, most people want to know when they can expect to hear if their application has made the cut.

How long does the trademarking process take?

Once you complete the application process, it’s fair to wonder how long it will be before you’ll know if your trademark has been approved (or if you need to head back to the drawing board). In recent years the number of applications being submitted has been on the rise, In fact, as June 2021, trademark registration applications were up 63% over the previous year. As you can imagine, the dramatic increase in applications has led to longer processing times.

For example, in December 2022 applicants were waiting just over eight months for the first action to be taken on their applications, and the entire process was taking between 14 and 15 months. This data is available by checking the current processing times on the USPTO website. And remember that you can also speed up the processing time — or at least keep delays to a minimum — by submitting a complete and accurate application.

What if your application is rejected?

There are a number of reasons why your trademark application might be rejected, which the USPTO breaks out into two classifications: fixable and potentially fixable or non-fixable. Non-fixable is how it sounds: it’s an error that cannot be fixed without starting the application process over. If the reason falls into the fixable (or potentially fixable) category, there may be a solution to the situation without having to start the process over again.

The USPTO website has a thorough list of common problems in applications. Review this list thoroughly before completing your application; otherwise, you could have to start the application process from square one.

Once you have successfully completed the steps and are the proud owner of your new trademark — congrats! Give yourself a little pat on the back. Now that you’ve finished the heavy lifting, it’s time to put that trademark to good use and consider some best practices to maintain it.

Maintain your trademark

After investing time and energy to get your trademark registered, there are a few important things you must do in order to maintain and protect it.

• Use it. You must regularly use your trademark to maintain your trademark registration. Beware of rebranding that could go against your registered trademark.

• Defend it. With your hard-earned trademark secured, you are also responsible for defending it from infringement. The time and effort required to monitor for potential infringement and then address it can be significant; however, failure to defend your trademark could result in the loss of your legal protections.

• Check it. Put an appointment in your calendar to check your trademark registration through the USPTO website every year. This will help you meet the required filing deadlines.

• File it. You must file a Declaration of Use and/or Excusable Nonuse under section 71 document on the following schedule:

• Between the fifth and sixth years after your registration date

• Between the ninth and 10th years after your registration date

• Every 10 years thereafter (so between years 19 and 20, 29 and 30, etc.)

Do you need a registered trademark?

There’s no one-size-fits-all answer to this question; however, if you answer “yes” to one or more of the following questions, you might want to start the process of registering your trademark:

1. You have a unique name, logo, or other mark no one else is using.
2. You have plans to expand your business outside of your current state or region.
3. You plan to eventually seek investors for or sell your business.
4. You have the means (time and money) to monitor for infringement of your trademark and pursue legal action against those infringing on it.

Didn’t answer “yes” to the questions above? The good news is it doesn’t mean you are without protection. At a minimum, register your business’s name with your secretary of state or the equivalent office. You can also pursue a “common law” trademark for your business’s brand. And, if you are unsure about which route to take, speak with your attorney for their advice and what makes the most sense for your business needs.