This is Traverse Legal, PLC Trademark Attorney Brian Hall, and today I’m going to walk you through, in a step-by-step basis, how to register for a trademark with the United States Patent and Trademark Office.
The first thing you need to do is go to the website www.uspto.gov. Once there, you will see this screen. The next thing you need to do is click on trademarks. This will bring you to a page that gives you many options and multiple pieces of information that relate to your trademark. If you have questions, you’d be well served reviewing this website and getting as much information as possible about it.
Once you click that, it takes you to the actual TEAS System. Here, again, you can find valuable information that will help you along the process of registering your trademark with the USPTO. However, I’m going to give you that step-by-step guide right now.
The first thing you do is click on the initial application form. Once you click there, it gives you information related to the different kinds of applications that you can file. The first one is most likely the one that you will be applying for. It is a trademark or service mark application on the principal register. While there is another option for the trademark or service mark application on the supplemental register, more often than not, you’re going to start by attempting to get your mark registered with the principal register, which is reserved for marks that are not merely descriptive, but instead, are, in fact, distinctive trademarks or service marks.
Once you click on that, you will see there are different options for how you can file online. The first is the TEAS Plus Form, which is a $275 nonrefundable filing fee that goes directly to the USPTO. The second option is the TEAS Form, which is a $325 option. The difference between the two is outlined in the language here. Simply put, the TEAS Plus form requires that you provide enough information that does not require the USPTO to complete the application for you, which is why it’s cheaper. I suggest that you start with the Teas Plus form, especially if you’ve consulted with a trademark attorney or are walking through this on a step-by-step basis with me here today.
Once you select that and continue, again, there is a lot of information related to what you need to do. The first step is to determine whether or not an attorney is filing this application. Since I’m walking you through this, and you’re filing it on your own, an attorney is likely not filing this application. While I’m giving you a step-by-step guide, I am not your attorney and I do not represent you unless you contact me and my firm and retain me to do so. So, you would click no, an attorney is not filing this application, and then, you can press the continue button.
Next, you will get an informational message that tells you what kind of requirements you need for your web browser. If you’ve made it this far, you’re likely okay and you can close that box. The first screen requires applicant information and this pertains to who you are as the owner of that particular trademark. This is where you put information that relates to you or your business. So, if, in fact, you as an individual are filing, you would put your first and last name and middle initial here. Last name first, followed by first name and then middle initial. My name is Brian A. Hall and this is what I would put if I were filing for this individually (Hall, Brian A.)
I would then come down to the entity type and select individual. And it requires that you select a country of citizenship. Now, the thing that’s important for you to recognize here is that the owner of the mark will be the person that is displayed as the registrant of the trademark once it is registered with the United States Patent and Trademark Office. It needs to reflect actual ownership of the mark. And what’s important to recognize is that if you select an individual owner, you as the individual may be held liable for trademark infringement. This risk of personal liability oftentimes leads people to form some sort of corporate entity to provide themselves with a liability shield. Other times, people select a different entity such as a corporation or LLC because, in fact, the trademark, indeed, is owned by that entity. It is important for you to consult with an attorney if you have questions relating to who should be the owner of the trademark.
As you scroll down, it asks for additional information such as your address. I am inputting the address of my law firm. It asks for the city in which you are located. It asks for the state, your zip code. The phone number and fax number are not required. You can see next to both of these that there is not this small red asterisk. If the asterisk is not there, it means that you do not need to provide this information. You should recognize that anything you put into this application becomes public record and can be searched and found by anybody out there. As such, you need to make a determination whether or not you want that information publicly available.
What is next required is, indeed, a valid email address. And if you wish, you can check this box that gives the USPTO authorization to communicate with you via email as opposed to in writing in regular postage mail. If, in fact, you are someone that regularly checks your email, I would recommend that you use the email option. After you have completed that information, once again, all the information that’s required as indicated by the asterisk, you can go to the next screen.
Now, this warning screen is something that is typical, and what it’s saying is that a telephone number has not been entered and it gives you that information that I just talked about, namely that it’s optional. If you would like to include it, you can go back and include it. If you’d like to move forward, you can continue on.
This next screen is where you’re going to input information related to your actual trademark or service mark. And just so we’re speaking the same language, a trademark is merely a mark that refers to a good, whereas a service mark refers to a service. Under law, they are essentially treated the same way. So, on this screen, you can enter your mark. This is where you need to put exactly the mark that you want to see protection for. I’m going to use the example of “mark”. And this is where it’s important for you to recognize the different kinds of marks that are available.
The first is what’s known as a standard characters mark. And this, in particular, is protecting only the characters or the word or term itself. If you want protection for something beyond that, you can select what’s known as a special form stylized and/or design mark, and that will change the form and require that you add additional information. And the difference between a standard character mark and specialized form mark is that the specialized form mark has a logo component or some specific design to which you want to protect above and beyond the actual characters or terms that are associated with the standard character mark.
So, simply put, if you’re looking to protect a logo, you would use the special form. If you want to protect a type of color or specific design or font, you would use the special form. But, if, indeed, you’re simply looking to protect your standard characters, you will use the original one that is defaulted to that I had written the term “MARK” into. If you are unsure what the mark will look like, you can preview what the image show, and you can see that it simply puts the mark as it’s displayed in character form for you to review.
Contrast that, with the special form or stylized design, which requires that you attach a properly sized JPEG image as set forth here, it also requires that you include the literal element of the mark. And what that means is that if you have logo that’s associated with the term “MARK”, you would include “MARK” here, but include and attach your JPEG image showing the actual logo.
As I stated before, if you are claiming color as a feature of the mark, you need to set forth specifically what the colors are that you are looking to protect. If you’re not looking to protect the color, you must check this box that says you’re not claiming color as a feature of the mark.
And finally, the USPTO requires that you enter a complete and accurate description of the entire mark. So, if, in fact, it is a logo mark that includes the word “MARK” with a shield around it, you might put something like (the mark consists of a shield over the word MARK.) This allows the description to show exactly what you’re applying for.
If you return to the standard character mark and add the term “MARK”, you’ll see that there is one more box where you can make an additional statement. And if you check that box, it expands to show a lot of information that may be relevant to your application. And while a trademark attorney can walk you through the specifics related to each of these, you can glean a lot of information by basically reading through each item. I will try to walk you through them at a high level right now.
A disclaimer means that you are not claiming an exclusive right to use a certain portion of the mark. If, in fact, you are unsure, you can apply for your trademark registration and the United States Patent and Trademark Office examining attorney will review it and notify you if, in fact, they are requiring a disclaimer. Therefore, do not worry necessarily if you are unsure whether or not a disclaimer should be added.
The next item refers to prior registrations. If you have ownership of other trademarks that are registered with the USPTO that are similar to this particular application, you should note them here. This will help avoid the examining attorney issuing an office action that initially refuses registration of your application due to a likelihood of confusion with an existing registration at the USPTO.
The next one includes information related to translations. If your trademark application includes words that have a meaning in a foreign language, you need to translate those for the USPTO.
The next one, transliteration, requires that you provide whether or not non-Latin characters have a particular meaning in the English language or a foreign language.
The next one refers to meaning or significance of wording, letters, or numerals. If, in fact, there’s something that’s part of your trademark that is a term of art in your relevant trade or industry, you must note it here. The reason being is that the USPTO does not want to give you an exclusive right to use a particular term in an industry or in connection with those goods or services if, in fact, it’s something that is common and/or descriptive of an actual relevant trade or industry term.
The next one refers to Section 2(f) based on use. What this means is that if your mark is merely descriptive, you are not entitled to trademark registration. However, through continuous use for at least five years or your ability to establish secondary meaning through scope of advertisement, number of advertising dollars, and overall usage, you can make a registration claim based upon Section 2(f). In all likelihood, if you are applying for a trademark and you are getting into this level of detail, you’d be well served retaining a trademark attorney to help walk you through whether or not your application should be based on 2(f) or not. Keep in mind, if you apply for your trademark and do not indicate it as a 2(f) application, the examining attorney from the USPTO can review it and let you know that you must base your application on Section 2(f) or face having your mark not registered.