Registering a trademark is important to your business in that it can protect your corporate assets and intellectual property, and can also help to differentiate your business from the competition. Many individuals postpone the trademark process, for fear of the imagined complexities involved.
However, by following the three-step process outlined below, your trademark registration efforts should proceed smoothly and painlessly.
Step #1: Selecting Your Trademark
A. What is a trademark?
A trademark, by definition, is anything used to distinguish the goods or services of one company from the goods or services of another company. Your trademark could be a name, a symbol or figure, a word, or even just a letter. If you provide services (for example, plumbing or handyman services) instead of selling goods, your trademark is technically called a "service mark."
Shakespeare famously said, “[T]hat which we call a rose [b]y any other name would smell as sweet.” A trademark, however, is so much more than just a name. A trademark is a form of intellectual property that can be bought, sold, or licensed. Therefore, after you obtain the registration for your trademark, it is like any other piece of property. Your trademark may even increase in value as you build your brand.
B. Why do I need a trademark?
If you are starting or growing your business, you need a trademark to prevent someone else from selling products or services under your name — and potentially stealing business from you. After you register your trademark, you cannot only prevent others from using your trademark, but you can sue for damages if someone infringes on your trademark.
C. How should I select my trademark?
Many business owners make the mistake of attempting to register a trademark that is actually not “registerable.” The best way to avoid this problem is to make sure you select a name for your product or service that is unique enough to register for trademark protection. Examples of strong marks include made-up words as marks (i.e., KODAK for film) and marks bearing no obvious relation to the product it represents (i.e., APPLE for computers).
In contrast to strong marks, “weak” trademarks clearly relate or refer to the products or services for which they are named. For example, the mark “THE SCHOOL SUPPLY SHOPPE” for a store that sells highlighters, pens, and notebooks is very descriptive. It would be very difficult, if not impossible, to register this trademark.
The single most important way to increase the odds that your mark will be approved for registration is to speak with a trademark attorney before or during your selection process. A trademark attorney can help you select a name or give you a legal opinion on a name you have already chosen— thereby increasing the chances that your trademark will be approved for registration.
Step #2: The Search
After you have selected your trademark, the next step is to make sure nobody else has filed an application that could conflict with yours. This could happen if someone has already applied for or registered a mark that is similar or identical to yours.
But, buyer beware: any trademark search done through a free search engine may not reveal the “full picture” of existing trademarks that may conflict with yours. If you consult a trademark attorney, however, he or she can provide you with not only a complete search report, but also with a detailed opinion letter explaining to you what the search results actually mean for you and your proposed trademark.
Step #3: The Application
After you and your trademark attorney have selected your trademark and conducted a thorough search, you must file an application with the United States Patent and Trademark Office (USPTO). The information you provide in your application determines not only your trademark rights, but also how broadly the protection on your trademark will extend.
The application is a complex legal document and must be filled out according to the USPTO’s strict requirements. After you submit your application, a USPTO attorney will review your application and determine whether or not your trademark can be registered.
Although the trademark application forms are available online, it can be shortsighted to draft a trademark application without the assistance of an attorney. Consulting with an attorney before you submit your application helps ensure that the application is filled out properly, which in turn helps ensure that you receive as much protection as possible.