Registering a Trademark From Start to Finish
Starting a website/business comes with some baggage that can be quite difficult to carry, especially for individuals who have little to no experience with the many legal elements of starting a business. Due to a limited budget I was forced to tackle some pretty daunting tasks on my own. One of the more difficult tasks was protecting our business through the registration of a trademark. The United States Patent and Trademark Office (USPTO) can be an intimidating entity. They possess the power to approve or deny your trademark registration which, if denied, could end up costing you more than just large sums of money. Through research, attention to detail, and the drive to reach your goal, registering your own trademark isn’t a pipe dream; it can be done.
Of course utilizing an attorney for your trademark registration is always the safest choice if you have the thousands of dollars to cover the cost. However, I’m willing to bet there are a lot of startups out there that simply can’t afford the added burden to their pocket book. If you’ve come to the conclusion that you can’t afford an attorney this article was written for you and will hopefully provide you with an overview of the entire process of registering a trademark.
Even with the absence of an attorney you still need to be prepared to pay $350.00 – $1,500.00 for the USPTO filing fees. There is a reason the cost can vary so much; it depends on how many classes you need to register. At the time this article was written the fee/charge per class was $325.00 (Please follow the second link at the end of this article to find the current fee schedule). A class or more specifically classification is used to identify the goods or services that correspond to your trademark/business. Some businesses offer goods or services that can’t be adequately covered by a single class, this is when the costs can really add up. It should also be noted that a trademark can also be considered a service mark depending on the type of business for which the mark is being registered.
Unfortunately, the cost of registering a trademark isn’t the only issue. The fine folks at the USPTO are meticulous with details (for good reason) and offer little room for error. If you make any critical mistakes on your application you may find yourself out of the non-refundable registration/filing fees. Your first step should be to review all of the information USPTO offers on their website. After you feel comfortable with what you’ve reviewed, search their TESS database for similar logos/marks as well as similar names. If there are trademarks that bare similarities I would recommend speaking to an attorney or doing additional research before you continue because this presents additional variables that I did not encounter during my trademark registration.
After you’ve reviewed the information on USPTO.com and made sure there are no similarly registered trademarks, it’s time to do more research. The best advice I can give you is to use the TESS search to find similar businesses and/or websites that have successfully registered their trademarks and review the information they used for their registration. By no means whatsoever am I recommending you copy their information (this would be illegal and more than likely pointless), just use it as a tool to make sure you’re looking in the right direction. I wouldn’t stop with reviewing just one similar businesses trademark, look at several. I would focus on two things while doing your research. First, pay close attention to the writing style of the descriptions keeping an eye out for specific terminology and look at the way the description is phrased; if their trademark was approved they must have done it right. Secondly, you can use similar businesses to help narrow down an appropriate class or classes for your application.
There are two basic formats for trademark registration; standard character and stylized. The standard character format is for the registration of words alone, with no claim to any special font or designs. The standard character format was used when registering, “disagreeing has never been so much fun” -JealousBrother.com’s slogan. The stylized format is what was used for the JealousBrother.com name/logo due to the uniqueness of the logo’s design and the fact that there were special fonts and illustrations claimed as a part of the trademark. The latter is obviously much more difficult to register due to the scrupulous detail required to satisfy the requirements set by the USPTO. If your trademark requires a stylized registration I strongly suggest going the extra mile when writing the description of the mark. In my opinion it is better to cover all of your bases with a lot of detail rather than being too lax with your description leaving room for questions.
If you’re like me then you would probably expect a pretty quick turnaround after forking out hundreds of dollars to register your trademark; think again. I’m sure the USPTO is very busy and the type of data they handle is very detailed and extremely important to many individuals and companies alike. However, I was pretty shocked when I found out the timeline was three to six months before an examining attorney would even look at my application. It took roughly two and a half months for an examining attorney to look at our application. It is also estimated that the entire process from filing to final registration will take between thirteen and sixteen months. When you file without an attorney this can be a pretty painful and worrisome wait; wondering if everything was submitted correctly.
After your application is reviewed by the attorney he/she will give you an approval or denial for the official publication of the USPTO gazette. If approved you will eventually be provided a date your trademark will be published, at which point there will be a waiting period of 30 days. During this time anyone who has reason to oppose the registration of your trademark has the right to contact the USPTO. I guess a good analogy would be speak now or forever hold your peace.
After patiently waiting over five and a half months the day finally came, our logo was published in the official Gazette. If there was one thing I learned up to this point it was that I should never expect anything to happen overnight with the USPTO. Thirty days of patience came and went and so did another two months before I heard anything. I guess I expected the USPTO to throw me a congratulatory party in recognition of my trademarked achievement but they didn’t. Actually, I didn’t even get an email, I found out our trademark had been finalized by checking the status on the USPTO website. Either way it is a good feeling to know 252 days of my life did not go to waste. I did eventually receive a nice certificate of registration from the USPTO which will be framed and placed in my office as a reminder of the completion of this difficult task. I hope this article helps shed some light on what to expect as you embark on a critical yet time consuming journey of registering a trademark.
Real Life Timeline of the Trademark Registration Process:
- Day 1 – Trademark application submitted
- Day 85 – Assigned to legal instruments examiner (LIE)
- Day 117 – Assigned to examining attorney
- Day 123 – Approved for publication (Initial Exam)
- Day 165 – Published for opposition (Official Gazette)
- Day 252 – Trademark registration completed