A Simple DIY Trademarking Guide for Small Businesses
Your brand is one of, if not the, most important assets your small business owns. This brand includes your company name, along with your logo, a tagline or slogan, and any unique names you have created for your products and services. This branding is not only a large part of what makes your company unique, it is also an integral part of your relationship with your customers as well as a hallmark of the quality, reliability, and service your small business routinely provides.
Something that valuable should be protected. After all, you wouldn’t leave your inventory sitting out on the curb, and you wouldn’t let your customer list fall into your competitors’ hands, so why would you let something as important as your brand remain exposed to infringement?
Protection is a simple trademark application away.
If you just cringed at the thought of contacting a lawyer specializing in intellectual property and the associated fees, or at trying to use one of those online legal services—relax. In most cases you don’t need any outside help to file a trademark application; and in most cases you can sail through the trademark process without the need for any external legal consultations. And, the whole process can cost as little as $225.
That’s a small price to pay to protect your brand (or confusingly similar brands) from being used by other companies in your industry, and to protect yourself from others who may try to force you to change your carefully cultivated brand with a claim that it infringes on theirs.
Read on for an introduction to trademarks, and detailed DIY instructions for filing a trademark application using the online TEAS Plus form, working with the US Patent and Trademark Office (USPTO), and maintaining and defending your trademark.
A “mark” is used to identify and distinguish your goods and services from those of other sellers or providers. A trademark is one used to identify goods (things); and a service mark is one used to identify services. A trademark or service mark can include any combination of words, names, symbols, and devices (even audio).
Most commonly a small business would file for a “word mark” the text of its name in association with the services it provides, its products, or its slogan. This type of trademark offers the broadest protection.
Alternately, a small business could file for a “design mark” which covers stylized text (in a particular font, size, color and/or arrangement) or graphic design elements (such as a symbol like the Nike swoosh).
Let’s use the fictional BasketBell Company as an example. It sells metal bells in the shape of baskets which it calls “BasketBells.” Its logo is a wicker basket with a bell handle coming out of the top and a bell clanger showing through the bottom. Its slogan is, “A better bell is in the basket.”
The company could trademark “BasketBell” as a word mark, could trademark “A better bell is in the basket” as a word mark, and could trademark its logo as a design mark. If it had a particularly unique design for the BasketBell product name, it could trademark that as a design mark as well, though in most cases simply obtaining a word mark registration is sufficient (unless there is something about the design that if copied could lead to confusion). Note that the marks are registerable in association with a particular type of product or service (in this case metal bells), not simply as a company name or in association with a business.
A registered trademark (indicated by the ®) is one that has been approved and registered by the USPTO in the US to identify your company, products, and/or services in a particular industry (known as a “class” for trademark purposes).
How a Trademark Protects Your Small Business Brand
Simply using a mark provides some common law protection in your marketspace. You can also register your mark with the State in which your business is located or operates. However, obtaining an official US federal trademark registration provides significantly more robust protection, including:
- A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration.
- Public notice of your claim of ownership of the mark.
- Listing in the USPTO’s online databases (which other companies will (or at least should) search prior to adopting a mark for their own businesses).
- The ability to record the U.S. registration with U.S. Customs and Border Protection to prevent importation of infringing foreign goods.
- The right to use the federal registration symbol “®”
- The ability to bring an action concerning the mark in federal court.
This video from the USPTO provides a great overview of all the benefits you get from registration.
Determining What and When to Trademark
Not every mark can be trademarked. In order to be eligible for registration it must not be merely generic or descriptive.
Selecting a Registerable Mark
For example, our BasketBell company would be unable to trademark “bell” in association with its products as that is a generic term for the product, nor would it be able to trademark “ringing” as that merely describes what a bell does.
This short video from the USPTO provides a great overview:
Trademark Due Diligence
Once you come up with a name that can be trademarked, you need to make certain that no one else is already using it. This process, in trademark parlance, is called a “Clearance Search.”
The first step in this process is to search the USPTO database here. Select the first “Basic Word Mark” option to open the search form. Change the default to search for only “Live” marks, and leave all the other default settings, then enter the name or phrase you want to trademark in the “Search Term” box then click “Submit Query.” The search will return nothing if there are no matches, or it will return a list of other “Live” trademarks. You can click on each match to read the descriptions associated with each mark. If a description is close to the products/services you wish to trademark, then your best bet is to go back to the drawing board.
Some search tips:
- If your mark is a name made up of multiple words, such as “BasketBell” be sure to search for both the compound and separate words—i.e. both “BasketBell” and “Basket Bell” and any phrase that includes both the word “basket” and the word “bell.”
- If your mark contains a generic term combined with a suggestive term, search for just the suggestive term—i.e. for the “BasketBell” mark, search for just “Basket” and ensure that it is not being used with bells, or anything similar to bells such as gongs or even musical instruments, doorbells, or alarms.
- Design marks are more difficult to search than word marks. The search is based on design elements as well as the words included in them. For help see the USPTO Design Search Code Manual.
IMPORTANT WARNING: If you do submit a trademark application for a mark that may be construed as confusingly similar to another mark, you run the risk of having the USPTO reject your application, in which case your fee will not be refunded. You also run the risk of another business learning about your use of the mark and demanding that you stop using it—even going as far as to institute legal proceedings against your company. This can be devastating to small businesses, so you want to head it off if at all possible. Remember that every new application is public record; and every application approved by the USPTO is published for opposition. So, while you may be able to continue using a mark in relative obscurity—particularly if the existing mark is used in a distant geographical area from a potentially conflicting one —the act of applying for a trademark will likely bring it to light and prompt a cease and desist demand in the event another company believes your mark to infringe on theirs.
You’ll want to go further than searching just the trademark database. Be sure to search the Internet for companies, products, and/or services that have the same or a similar name. You may also want to check to see if you can get the .com domain for the mark you want to register. If it is taken, be certain that the owner is not offering a similar product or service—not necessarily because of a potential trademark issue, but because your marketing may end up sending people to a competing website.
There are many aspects to picking the perfect company and product names, which we won’t go into here. The important thing to remember is that if you do come across a name, trademarked or not, that is confusingly similar to your own choice, you may want to reconsider before you invest too much time and effort in a brand that you may be forced to abandon.
When to File Your Trademark Application
The USPTO allows you to file a trademark application for a mark you are currently using in commerce or for a mark you intend to use in commerce. This is called “Basis.”
Many companies file “intent to use” applications for marks they think they want to use and have a plan for using, partially to determine if the trademark will be approved and/or whether it will be contested, before actually investing any advertising and marketing money. That way, if the application is rejected they can abandon it with very little skin in the game. Additionally, filing “intent to use” can enable you to claim ownership of a potentially hot mark before the competition, and use the application period to bring the mark to market. The disadvantage to this approach is that you actually need to file (and pay for) two filings with the USPTO—one for the initial application and a second filing prior to registration (but within 4 years of approval) to show the mark in use.
The least expensive and easiest Basis for a trademark filing is “Use-in-Commerce.” This means you are actively using the mark and can provide an example of it in use with your application. This sample can be a .pdf of a sales sheet, a product package, a screen capture of a web page, or any other example where the mark is used in associated with the identified Goods and Services. When you do this, no additional filings are required to have your trademark registered.
Selecting Class, Goods and Services
The final preliminary step you should take is to determine the Class (es) under which you want to register your trademark, and the goods and services descriptions you want to attach to them.
If you use the easy TEAS Plus application, you can’t simply write your own descriptions for the goods and services associated with your mark. You are required to select one or more of the (thousands of!) existing descriptions. To do this, type a general description of the products/services associated with your mark in the Trademark ID Manual search. (For example, the BasketBell company would enter “bell.” If your company offered cleaning services, you would enter “cleaning.”) Then look through the results list and note the “Class” and “Term ID” for all applicable descriptions. You’ll want to have these handy to enter while completing your application.
Watch this video for step-by-step instructions.
IMPORTANT NOTE: Application fees are based on the number of Classes you select, not the number of descriptions. Thus you can select as many “Term IDs” as needed to fully (and accurately) describe the product/services associated with the mark. Selecting every applicable description provides the greatest protection for your mark; however the more selections you make the greater likelihood that your mark may be identified as conflicting with another. So, be thorough but strategic in your choices.
The Trademark Process
The previous section covered the preliminary steps of selecting a mark that can be registered, making sure no other company offering similar goods and services is using it, beginning to use it yourself, and selecting the appropriate classes and goods and services descriptions.
Now, you are ready to apply for your trademark. Follow these steps to use the simple, low cost, TEAS Plus application for a 1(a) “Use in Commerce” Basis filing. (Note, these steps assume this is your first trademark filing):
- Review the TEAS Plus application so you’ll know what to expect, and the information you’ll need to have handy, prior to starting the online application. (You may also want to check out the USPTO “before you file” video.)
- Go to the TEAS Plus online application and complete it.
- Scroll to the bottom and select “No” to indicate that an attorney is not filing the form (unless of course, you happen to be an attorney). Click “Continue.”
- The next page asks for information about the owner of the mark. In most cases, this will be your company. Enter your company name, entity type, address, and contact information. Click “Continue.”
- Select the type of mark you want to register: “Standard Characters” (a word mark) or “Special Form” (a design mark).
- For a word mark you will be asked to enter the mark exactly as you want it registered—i.e. enter “BasketBell” or enter “A better bell is in the basket;” for a design mark you will be asked to both attach an image and enter distinguishing characteristics of the mark. When you have done this, click “Continue.”
- The next screen asks you to enter the Class and Goods and Services description(s) you want to claim. (These are the ones you pre-selected.) Click the “Add Goods/Services” button to open the search. Enter the “Term ID” you noted earlier in the search box, the description will appear in the results list, check its box then click “Insert Checked Entries” to close the search and add it to your application. (Alternately, you can search from scratch here and add any entry you want to your application.)
- For each class you select, click the “1a” button for “Basis.” Fields will expand in which you should upload a “specimen” (a sample of your mark in use in association with the goods/services specified). This video provides help with picking an appropriate specimen. Also provide a description for the specimen, along with the first date it was used, at all and in commerce. (In most cases both dates will be the same.) After including the specimen information, click the “Assign Filing Basis” button. Repeat for each Class. Click “Continue” when you have assigned basis and specimen for each Class.
- The Correspondence Information section is auto-filled with the owner information entered earlier. Make any required changes. Be extra sure that the email address is correct, as this is the ONLY address to which USPTO correspondence will be sent. Click “Continue.”
- The next page will display the application cost. ($225 per class selected). Leave the “Sign Directly” option selected, and follow the on-screen instructions to electronically sign the application. (Note that the signer must have signing authority for your company.)
- Click “Validate”
- If there are any errors you will be instructed to correct them. Otherwise, you will see the summary page where you can review your application and save it as a PDF file. (Be sure to save it!) If all looks good, confirm your email address, agree to the terms, and click the “Pay/Submit” button.
- You are taken to a payment site where you should “Pay as Guest” and provide a credit card against which to charge the application fees. When the payment is successfully processed you’ll see a message indicating that your application has been submitted.
- You should receive an email providing a Serial Number for your pending application almost immediately after the application form is successfully submitted.
- WAIT! It can take 3-6 months before your application reaches an examiner.
- If you get impatient, you can enter your Serial # here to check status.
- Your application is examined by a USPTO attorney.
- If your application is approved as is, you will get a notice that it has been published for opposition.
- If the examiner finds problems with your application you will receive notice via email. The notice will describe the problem, and suggests steps on how to correct it. If you receive such a notice, your best course is to call the examiner and discuss it. In my experience examiners are generally extremely helpful, especially to non-attorneys, and will work with you to adjust your goods/services descriptions to fix problems. For example, it is highly likely that an examiner will request that as part of a “BasketBell” mark application the company disclaim rights to the term “Bell” by itself. Make the required changes, and the application will be published for opposition.
- You receive a summary rejection of one or more of the Classes for which you applied. Again, the best course of action here is to speak with the examiner about amending the application before giving up. If you can successfully amend, make the required changes, and the application will be published for opposition.
- WAIT! The general public will have 90 days in which to oppose registration. If no-one does, head to Step 8.
- If you receive notice that a company has applied for an extension to oppose, Don’t Panic! And, don’t immediately try to contact the company that filed the extension. Many times this will happen and nothing at all will come of it. Just sit tight, and WAIT! If you do receive a cease and desist letter, or if an actual opposition is filed– you will have to decide whether to simply give up, or whether you want to engage an attorney to assist you the rest of the way. (If you are going to contest an opposition, you really do need an attorney.)
- You will receive official notice from the USPTO that your trademark has been approved, along with a registration number. Start using that ® wherever you use your mark.
Actively Monitoring, Maintaining, & Defending Your Trademark
Registering your trademark is only the first step in an ongoing process. Now that you have the registration you not only need to use your trademark, you also need to defend it. That means consistently using the ® wherever the mark appears. It also means watching for other companies using the same or a confusingly similar mark in association with related goods/services—whether or not the infringer has applied for a trademark. (For example, if the BasketBell people became aware of another company offering “BasketGongs,” they should take action, even if there is no attempt to trademark “BasketGongs.”) In most cases, the USPTO examining attorneys will reject trademark applications for confusingly similar marks, but in some cases they slip through. That’s why monitoring trademarks published for opposition is so important to defending your mark.
Trademark Renewal Process and Schedule
Trademarks can only remain registered for marks that are actively used in commerce. Thus, you are asked to file a Section 8 declaration of continued use between the 5th and 6th anniversary of registration. At the same time you also file a Section 15 declaration to claim that a mark registered on the Principal Register is now incontestable. (This is a good thing, because it means that in just about all cases your registration can’t be nullified.) A combined form (and fee) is used for both filings.
Additionally, between the 9th and 10th anniversary of registration, and every 10 years thereafter, you need to file a Section 8 declaration of continued use, and a Section 9 renewal. A combined form (and fee) is used for both filings.
Note that you will need to provide a current specimen of the mark in use for all continued use and renewal filings.
Useful Trademark Tools & Resources
The following tools and videos provide information that will help you in all stages of the trademark process.
- USPTO Basic Facts About Trademarks Booklet
(If you only use one resource, this should be it)
- Video: Basic Facts About Trademarks: What Every Small Business Should Know Now, Not Later
- USPTO TEAS: Nuts and Bolts Video Series
- USPTO: Trademark Information Network
- Trademark Electronic Search System (“TESS”) database
- SBA: How To Choose Your Business Name
- USPTO Trademark Status & Document Retrieval (TSDR)
Enter your trademark Serial # or Registration # into this system to see its current status, and to access all files associated with it– the application, office actions, objections, etc. You can access this information for your own trademarks, or for any other trademark. It is a particularly useful investigative tool when researching other marks—either because you think they are infringing upon your mark, or because they claim you are infringing upon theirs.
Use a free account to conduct a basic search of registered trademarks as part of your “Clearance Search.” Once you’ve registered a trademark, the paid “Trademark Watch” service is just about the easiest way there is to monitor new trademark applications and trademarks published for opposition. $29 per year per mark delivers a weekly Trademark Watch report to your inbox with all the information you need to actively monitor, and if necessary defend your mark. (I don’t usually recommend paid services in Tips, but in this case, if you’re serious about defending your mark, Markify is the best value monitoring tool around.)
A Final Word on Lawyers
I’m not one, and this post should not in any way be construed as legal advice. If you want to consult a lawyer at any and all steps in the trademark process, definitely do so. If you find yourself in a trademark related conflict or find your registration opposed, absolutely engage council.
That said, the USPTO has (amazingly for our government) created a simple online process that just about any small business owner can understand and navigate. And in my experience, even if you flub it a bit, the USPTO examining attorneys go out of their way to be helpful and to guide you in the correct direction.
So, if the only reason you haven’t trademarked your brand is fear of complexity and expense, then get to it. It is faster, easier, and less costly than most people imagine. And, your brand is far too valuable to your small business to leave unprotected.
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