Originally published on July 20, 2018
What is a Trademark?
A trademark is some kind of symbol, word, or words that is legally registered to represent your company or product.
Why get a Trademark?
The obvious reason is that if someone is infringing on your trademark, you can sue them in federal court. The more practical reasons are that it serves to deter others from using your trademark, and gives you recourse if you see someone using your branding. For example, if someone were to use your trademark on Facebook/Youtube/LinkedIn, you could contact the website, and show them proof of your trademark. They should pull the copycat’s content.
If you want to file a trademark on your own, here are the basic steps.
Step 1: Research.
Look up whether or not the item you want trademarked is in use by anyone else. The best place to search is the Trademark Electronic Search System (“Tess”): http://tmsearch.uspto.gov/bin/gate.exe?f=searchss&state=4804:2lm6x6.1.1
Step 2: Start Filing.
Use the TEAS system to file the application form: https://teas.uspto.gov/forms/teasplus
There are three types of forms you can file, you can see the differences between them here: https://www.uspto.gov/trademarks-application-process/filing-online/initial-application-forms
Step 4: Fill in TEAS.
Fill in the information here: https://teas.uspto.gov/forms/teas.service
If you are using the trademark for a business, make sure you fill in the business information as opposed to your personal information.
Step 5: Describe the Mark.
It can be either:
1. Standard characters — not claiming any particular font/size/color;
2. Special form — this includes a design or words combined with the design and is displayed in a particular font/size/color;
3. Non-visual soundmark — this is for a musical or audio file with a detailed mark description.
Step 6: Choose whether you are a Good or Service.
Is the thing you are trademarking for a good (a product, like a t-shirt) or a service (an activity like an educational course)? You need to find your good or service description in the ID Manual. See https://tmidm.uspto.gov/id-master-list-public.html. If you do a search and find your category, it will have a corresponding ID number. Use that number in your application.
Step 7: Choose your Basis for Filing.
Section 1(a) or (b) are the most common filing basis, they cover use and intended use in interstate commerce, or foreign commerce. Section 1(a) is for goods or services that are already using the mark, while 1(b) is for goods or services that have a “bonafide intent” to use the mark within the next three years. If you select 1(b) you will be required to send in additional forms and pay additional money. Having a website that uses the mark is good enough to satisfy 1(a), as interstate commerce includes anything shared across state lines via the internet.
Step 8: Attach your specimen.
A specimen shows how the trademark is used for business in interstate commerce. For example, a screenshot of the trademark being used on your website, or on marketing material, tags, labels, instruction manuals, containers, or photos of the trademark used on actual goods or packaging. It can be uploaded as a JPG or PDF file. If you are trademarking a color, the specimen must be in that color. NOTE, if you upload a file of just the trademark photo, and don’t show how it is used in commerce, you will be wasting your $225 because it will get rejected.
Step 9: Enter your contact details.
For my Bitcoin readers, this part is especially scary. The name, phone number, physical address, and e-mail address you register will be displayed on the government website forever, even if you cancel the application. (For a small fee, you can use my name, since I’ve already subjected myself to this exposure).
Step 10: Pay & Wait (around 3–4 months).
Once your application is submitted, the Trademark Registration Office will review and do their own search to make sure nobody else is using the mark. They will also act as the “moral police” and review your application to ensure it is not obscene, immoral, deceptive, falsely portraying a person, belief, institution or national symbol like the flag, or if it resembles a person without their consent.
A great overview video:
This is not legal advice.