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Updated: June 20, 2023
As of 2020, there were over 2.5 million active registered trademarks in the US. In the same year, worldwide active trademark registrations exceeded 64 million. That’s a lot of applications, and with such staggering numbers, you might think the only choice you have is to trademark your brand name. But there’s a lot to consider before applying for a trademark, and it’s not a given that every business needs to take this path.
So, how do you know if applying for a trademark is the right decision and whether applying for one makes the most sense for your goals?
In this business owner’s guide to trademarks, we’ll discuss the different options that are available, some pros and cons to be aware of, and how the application process works.
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:
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.
Did you know?
According to the USPTO, business owners may be able to trademark a scent, sound, or even a color.
Now that we’ve covered some of the basics, let’s find out more about the different types of trademarks and what they’re used for.
There are four different types of trademarks.
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:
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.
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:
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.
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.
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.
Pros | Cons |
Could make your business more attractive to investors and buyers | Cost of filing (ranges from $250 to $350 per class of goods/services, and you pay a fee for each class of goods or services in your application) |
Builds consumer confidence – customers know who they are doing business with | Time, money, and effort required to defend your trademark from infringement |
Protection from legal action from other businesses using the same name or brand | Ongoing maintenance requirements and fees ($525 for each class of goods/services, paid every 10 years) |
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.
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:
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:
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.
After learning more about trademark registration, read our guide to applying for an SBA loan and get the basics on how this funding works and which types of businesses are eligible to apply.
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.
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.
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.
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:
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.
At the end of the day, trademarks come in many shapes and sizes. Keep in mind that while they are useful, it is not a must have for every business. And for many business owners, there’s only so many hours in a day to focus on the tasks that move the needle. So as you take a closer look at the application process, it pays to think about the trajectory of your company, whether future investors are in the cards, and if the time and cash investment is worth it.
If you’re unsure what the next best step would be, it can be a good idea to reach out to trusted financial advisor or attorney to talk through the pros and cons, and see if it is best course for your business.
This article is for informational purposes only and should not be relied on for tax, legal, or accounting advice. You should consult your own tax, legal, and accounting advisors for formal consultation.