Trademark registration is a critical step for businesses seeking long-term brand protection. Below are the key factors to consider before filing your application:
Evaluating Whether Your Business Needs a Trademark
Before initiating the registration process, assess whether trademark registration aligns with your business goals. While registration can be time-consuming and costly, your brand name or logo may already enjoy common law trademark protection simply by being used in commerce. However, common law rights are limited to the geographic area of use.
Using the ™ or SM symbol can signal ownership even without registration, but federal registration provides far broader protection, including:
Nationwide exclusive rights to use the mark
Use of the ® symbol
Protection against counterfeit imports through U.S. Customs
Eligibility to sell on platforms like Amazon
The ability to enforce rights in federal court
Considering these benefits helps determine whether federal registration is the right strategic move for your business.
Trademark Filing: Personal or Business Name Requirements
When filing with the USPTO, applicants must provide their legal name and a physical address (PO boxes are not allowed). This information becomes public, which may concern home-based businesses. While many individuals initially file under their personal name, the registration can later be updated if a formal business entity—such as an LLC—is established.
Choosing a Distinctive Trademark
Not all names or logos qualify for trademark protection. The USPTO generally refuses registration for:
Generic marks (e.g., “Food Store” for groceries)
Descriptive marks (e.g., “Tasty” for food products)
Marks that are more likely to be approved include:
Fanciful marks: Invented words (e.g., Google)
Arbitrary marks: Common words unrelated to the product (e.g., Dove for soap)
Suggestive marks: Indirectly imply a product’s quality (e.g., Pop Rocks)
Choosing a distinctive mark significantly improves approval chances.
Crafting and Filing Your Trademark Application
Conduct a Trademark Search
Before filing, search the USPTO database using the Trademark Electronic Search System (TESS) to identify potential conflicts based on the “likelihood of confusion” standard. While this can be done independently, professional searches offer greater accuracy.
Select the Appropriate Filing Option
Applications are filed through the Trademark Electronic Application System (TEAS):
TEAS Plus: Lower fee, stricter requirements
TEAS Standard: Higher fee, more flexibility
Choosing the correct option depends on your preparedness and accuracy.
Prepare Supporting Documents
Your application must include:
A drawing of the mark (logo or standard character format)
A specimen showing real-world use (e.g., packaging, website screenshots)
Applicants not yet using the mark may file under an intent-to-use basis and submit specimens later.
Responding to USPTO Office Actions
After submission, your application undergoes examination:
Office Actions may request clarification or raise objections
Responses must be submitted within three months
Issues may involve administrative errors or conflicts with existing marks
Failure to respond or resolve issues can result in abandonment of the application.
Trademark Approval and Publication
Once approved, your trademark is published in the Trademark Official Gazette for a 30-day opposition period. If no objections are filed:
Applications with proof of use proceed to registration
Intent-to-use applications require a Statement of Use before registration
Maintaining Your Trademark Registration
Trademark protection requires ongoing compliance:
Declaration of Use: Filed between years 5–6 and at year 10
Renewals: Every 10 years thereafter
Failure to file maintenance documents will result in cancellation of the registration.
Choosing the Correct Filing Basis
Applicants must choose one of the following:
Use in Commerce
Trademark is already in use
Specimen required at filing
Intent to Use
Trademark not yet in use
Secures priority filing date
Statement of Use required within six months of approval
Extensions available (fees apply)
U.S. Trademark Registration for Foreign Applicants
Applicants domiciled outside the U.S. must hire a U.S.-licensed trademark attorney to represent them before the USPTO. While some applicants attempt DIY registration to save costs, professional guidance offers major advantages:
Reduced risk of errors
Faster resolution of objections
Avoidance of costly rebranding
Improved approval chances
Auriga Accounting pvt. ltd. offers expert, end-to-end assistance for U.S. trademark registration, ensuring compliance, accuracy, and long-term brand protection.
