An Entrepreneur’s Checklist for Filing Your Own Trademark
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Table of contents
- 1. Pick a strong and distinctive trademark
- 2. Conduct a trademark search
- 3. Determine the type of trademark you are applying for
- 4. Prepare your “proof of use”
- 5. Decide what business entity you want to file as
- 6. Decide how your trademark should be classified
- 7. Determine what countries you want to file your trademark in
- 8. Complete the trademark application
- 9. Consider hiring an attorney
We understand that being an entrepreneur is a minefield of challenges. But getting a trademark registered shouldn’t be one of them. That’s why we’ve put together an entrepreneur’s checklist for filing your own trademark.
A trademark is a cornerstone of any good intellectual property strategy. Therefore, as a business owner, getting one should be a priority for you. And it’s possible to do it yourself without hiring a lawyer if you prefer.
But a word of caution. Filing your own trademark application requires a bit of patience and preparation. This checklist will give you a clearer idea of what to expect and how to prepare yourself best to file your own trademark.
Let’s get started – you’ve got this!
1. Pick a strong and distinctive trademark
First things first — pick your trademark.
The trademark must prove that it distinguishes your product or service from your competition.
The more unique it is, the greater your chances of registering it with the United States Patent and Trademark Office (USPTO). But how can you determine if your trademark is unique? Check where it stands on the “Spectrum of Distinctiveness”:
- Fanciful: Has no other meaning other than acting as a mark. E.g., Kodak
- Arbitrary: Common meaning that has no relation to the goods or services. E.g., Apple
- Suggestive: Suggest a quality or characteristic of the goods or services. E.g., Microsoft
- Descriptive: These merely describe the goods or services. E.g., Light (for light-weight computers)
- Generic: These actually name a product or category. E.g., E-mail
The goal is to move as far away from “Generic” on the spectrum as possible. Remember this as a rule of thumb – the more distinctive your trademark, the more enforceable your trademark rights will be.
2. Conduct a trademark search
One crucial step in your preparation should be conducting a comprehensive trademark search to see if your chosen mark is available for trademark registration.
This essentially means checking if someone else has already registered it before you. You can search on the internet, especially on a free trademark search engine like Trademarkia.
If your word or mark is available, you’re free to apply.
But if the trademark you’re trying for is already registered, you may need to change tack. It can be disappointing, but it’s better to find out at this stage. Just go back to the drawing board, and with a bit of adjustment, you’ll find something to trademark.
3. Determine the type of trademark you are applying for
The trademark process requires you to determine the type of trademark you’re applying for. The application will ask you to specify this, so make sure you’re clear about which element you want to trademark.
You can trademark many elements, including (but not limited to):
- A business name,
- Trade dress,
- Or collective membership.
As a business owner, it’s essential to understand the different categories, as applying for the wrong type of trademark will result in a refusal.
While refusals can be appealed, this will cost you time and money.
4. Prepare your “proof of use”
Setting up a new business is not always a speedy process.
Understandably, you might face some delays and disruptions while trying to get it off the ground. So, it’s essential to consider that when deciding when to apply for your trademark because you’ll need to show “proof of use.”
Proof of use is a real-world example of how your trademark will be used with the goods or services you offer.
You can submit items like labels, tags, containers, website screenshots, catalogs, and menu cards as proof of use. You should also know the earliest date you began using your mark in commerce.
This particular date has to be accurately reported and cannot be an estimate.
If you’re not yet using the desired trademark in business, you can still submit the trademark application with just an explanation of how you intend to use the mark. For your trademark to fully register, you must submit evidence of your proof of use within 6-9 months after filing.
So make sure you file only after you have a clear idea of when you will launch your business to avoid any confusion with your filing.
5. Decide what business entity you want to file as
One crucial decision you’ll likely have faced in your business formation process is what kind of business entity you want to be. You can file as an individual or an organization like a Limited Liability Company (LLC). Both business structures have pros and cons, and you should consider which suits you best.
This information is required for your trademark application as well.
If you’ve registered your business as an LLC, then the trademark application will be filed by the LLC. On the other hand, if your business is a smaller personal brand you run as a sole proprietor, the trademark application will be filed under your name. In this case, ensure you have all the pertinent information about any co-owners or partners.
6. Decide how your trademark should be classified
When a trademark is registered with the USPTO, it’s registered under a particular product category or class. For example, is it a chemical product, wine and spirits, technology, or a clothing brand?
You’ll need to determine what kind of product or service you’re offering to determine how to classify your trademark. Trademark applications have a list of all the many possible classes for you to choose from. Be sure to select all the classes under which you wish to classify your trademark.
7. Determine what countries you want to file your trademark in
If your business has overseas operations or plans to expand soon, you must protect your trademark in all geographies. USPTO registration only gives you trademark protection within the USA.
When you set up shop in a new country, you need to adapt your business structure, procure business licenses, and maybe get a local business bank account. Similarly, check the rules and regulations for local trademark registration as well. This will help protect your intellectual assets as your business expands.
Another good reason to file internationally is to protect your trademark in countries with high counterfeiting. Fake goods and counterfeits can damage your business name.
8. Complete the trademark application
You can choose to shovel paperwork, but there are now many easy-to-use web applications that can make the trademark application process a lot simpler.
Trademarkia.com, for example, offers a simple, easy-to-use workflow that guides you smoothly through the application process. The application can take about 15 minutes, so set aside some quiet time to complete this.
As you go along the workflow and cannot answer specific questions immediately, you can save your work and return to it once you have it prepared.
You’ll also receive an assigned attorney through Trademarkia’s relationship with LegalForce RAPC.
9. Consider hiring an attorney
Even if you thought you wanted to apply for a trademark yourself, you may change your mind a few months down the line.
The trademark registration process can get a bit overwhelming, especially if the trademarks are conflicting with others or if you’re applying under multiple classes. If it gets daunting, consider hiring a trademark attorney.
Sometimes, the stress is just not worth it. And a trademark lawyer doesn’t always have to break the bank, either. Well-established law firms can offer an operating agreement and ensure an excellent attorney-client relationship.
The choice is yours, and there’s no right or wrong. Nobody understands your own business better than you. Many trademark owners have successfully filed their own applications. And many have taken help.
Luckily, whichever option you choose, Trademarkia is here to help you! Schedule a consultation and then decide which option works best for you.
Is a trademark important for a small business?
The short answer is yes. A trademark can protect valuable elements that make your brand and business recognizable to others, such as your business’s name, logo, or slogan. Registering a trademark safeguards your brand identity and gives entrepreneurs and small business owners legal rights to prevent unauthorized use and infringement.
Is it difficult to file a trademark yourself?
This depends on how complicated your application might be. In simple cases, if your business has a unique name that’s likely to have conflict or if the trademark is straightforward, then doing it yourself is possible.
But if your trademark is generic or disputed or you want to apply in different product classes, it’s probably better to seek counsel from a trademark attorney.
What is the difference between a copyright and a trademark?
The two have many differences, though both are valuable intellectual property assets. But the most significant difference between a copyright and a trademark is that copyright protects original works and creations. In contrast, a trademark protects the brand, reputation, and association with a word, phrase, symbol, and/or design that’s key to your business.
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Amrusha is a versatile professional with over 12 years of experience in journalism, broadcast news production, and media consulting. Her impressive career includes collaborating extensively with prominent global enterprises. She garnered recognition for her exceptional work in producing acclaimed shows for Bloomberg, a renowned business news network. Notably, these shows have been incorporated into the esteemed curriculum of Harvard Business School. Amrusha's expertise also encompassed a 4-year tenure as a consultant at Omidyar Network, a leading global impact investing firm. In addition, she played a pivotal role in the launch and content strategy management of the startup Live History India.
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