Checklist Before Filing Trademark
The procedure of registering a trademark isn’t always complex. However, it can be exhausting. If everything goes well, it should take roughly 10 months from the time you submit your application to receive permission. The registration process could take more than a year if you make a single error on your application.
A mistake can be extremely costly because the United States Patent and Trademark Office (USPTO) does not issue reimbursements for unsuccessful applications. To guarantee that your application is processed in the quickest time possible, make sure you have everything ready to go before filing. A little planning ahead of time can help speed up the registration procedure; use this list as a trademark registration checklist to ensure you’re prepared.
BEFORE YOU FILE YOUR APPLICATION
1.Run a Basic Trademark Search
The USPTO will almost certainly reject your trademark application if it is identical to or confusingly similar to an already existing trademark. To prevent falling into this trap, undertake trademark research before deciding on a mark.
The United States Patent and Trademark Office (USPTO) provides a useful and publicly accessible search tool. Search the USPTO’s official website to check if any names are similar to yours. However, you should speak with a trademark attorney before filing. They are familiar with the ins and outs of searches and can advise you on the various variations of your mark that are confusingly similar to others.
2. Identify What Your Company Offers
Is your business a service or a product? Trademark registration is required for products, whereas a service mark registration is required for services. Examine the mark to be sure it corresponds to what you’re selling. If your description is too ambiguous or indefinite, the USPTO may reject your application.
3. Decide the Scope of Your Business
Will your company operate beyond state lines? If you answered yes, you’ll need to file a federal trademark application to protect your brand in all 50 states. Otherwise, you could choose to register your trademark in only one state. Even if you only plan to labor within state boundaries, for the time being, obtaining a federal trademark can be advantageous. Businesses that want to register foreign trademarks can do so through the application process
4. Check Your Domain Name
Domain name registrations on the internet are not regulated by the USPTO. Most businesses prefer to use their trademarked name on their websites for obvious reasons. To get a domain name, you’ll need to go to an ICANN-accredited registrar and fill out an application. If you already own a domain name, you can register it as a trademark as long as it meets the USPTO’s criteria.
If someone else already has the domain name connected with your mark, check to see if they’ve registered it. If they haven’t, you can look up contact information in the WHOIS database and make an offer to buy the name.
At this stage, things can get complicated. You have some privileges if the domain is not in active use. Because the domain was registered before your trademark, you are unlikely to be able to sue the domain owner under the Anti-Cybersquatting Consumer Protection Act. If the owner refuses to sell, the ICANN arbitration system may be able to help you.
5. Clarify Your Basis
You can choose between two choices when providing the foundation for your trademark application. You can either apply based on “commercial use” or “intent to use.” The outcome will be determined by the status of your mark. If you haven’t used your mark in commerce yet, you should apply “intent to use.” “Use in commerce” refers to trademarks that are currently being used on commercial goods.
If you want to register a trademark that has already been used in commerce, you’ll need to demonstrate proof of use, such as photos of the mark on your product labels or advertisements that show the mark in conjunction with your service offerings.
6. Prepare Your Application Fee
The United States Patent and Trademark Office (USPTO) imposes a fee for trademark applications. Trademark applications can cost anywhere from $250 to $400 per class of goods or services per mark, depending on the technique you use and the class of registration you want.
7. Consult with an Attorney
For a variety of legal reasons, your intended mark may be challenged. The USPTO, for example, frequently rejects petitions where the mark is deemed generic. It may be difficult to identify these flaws if you have never filed a trademark application before.
Before you apply, an attorney can notice these concerns. An attorney consultation can save you time and money on applications and fees because the USPTO does not give refunds for unsuccessful applications.
APPLICATION FORM CHECKLIST
After you’ve gone over the above stages, you’ll be ready to fill out the application form. It’s simple to fill out the trademark application form if you know what you’re doing. The following is a summary of some of the most important details to include in your trademark application form.
- Identify and/or describe the mark. Make sure the mark is clear and related to your company’s products or services.
- If your mark consists of a logo, include a high-resolution image of your logo.
- Indicate the name, address, and citizenship of the applicant.
- Specify the nature of the applicant that is registering the mark. Is it an individual, a partnership, a limited liability company, or a corporation?
- Indicate whether you have already begun to use the mark in commerce. If you have, you will be required to provide the date of its first use, and proof of such use.
For the time being, your part of the registration procedure will be complete after you’ve completed your application. The next step is for the USPTO to review and, hopefully, approve the trademark.
The USPTO will publish your mark as part of its review procedure to see if any firms or companies challenge its registration. The USPTO will notify you if there are any problems or issues with your trademark. The USPTO will approve your mark if none appear.
While you wait for your application to be approved, you can use the TM or SM symbol to indicate your trademark.
If your trademark isn’t registered, you can’t utilize the ® symbol. If the USPTO becomes aware of this, you may receive an advising notice stating when you are permitted to use the ® symbol and when you are not. You will be able to add the registered ® symbol to your mark once your application has been granted and registered.
Make sure you don’t jeopardize your company’s reputation by making a mistake with your trademark registration. Throughout the procedure, keep a close watch on the details and speak with an experienced attorney.