How to Apply for a Trademark: A Detailed Guide

Securing a trademark is a vital step in protecting your brand and its identity. A trademark can safeguard names, logos, slogans, and other distinctive symbols associated with your products or services. 

Here's a step-by-step guide on how to apply for a trademark:

Introduction to trademarks

A trademark is a recognizable and unique expression, sign, or design that distinguishes products or services of a particular source from those of others. It can be a logo, phrase, word, symbol, or a combination of these elements. 

Trademarks are great tools for businesses to protect their brand identity. They ensure that consumers can reliably identify their products or services in the marketplace. 

The trademark application process is long and complicated but the impact and safety it provides your brand or business is worth the process. 

Trademarkia can help you with the registration process, making it easier to secure your IP assets.

Learn more about trademarks in our article “What Is a Trademark?”

Why apply for a trademark

Applying for a trademark is crucial for establishing and protecting your brand identity. It grants you exclusive rights to your brand's name, logo, or slogan, preventing others from using your brand name or attempting to duplicate or imitate your product or service.

This legal protection allows you to take action against infringers and ensures your brand stands out in the market. Additionally, trademarks enhance brand recognition and loyalty by signaling consistent quality to consumers and building trust and long-term customer relationships.

Moreover, a registered trademark adds significant financial value to your business. It becomes an intangible asset that can be appreciated over time, making your brand more attractive to investors and potential buyers. 

Trademarks also open up new opportunities for market expansion, licensing, and franchising, providing additional revenue streams. 

Securing a trademark is a strategic move that safeguards your brand's future, enhances its market position, and contributes to its lasting legacy.

Here's a video of our expert attorney, Derrick Daviss, explaining why you should register your trademark:

What can be trademarked?

Trademarks can encompass many elements that help distinguish your brand from others. Here are some of the key items that can be trademarked:

1. Words 

The name of your company, product, or service can be trademarked. For example, "Nike" is a trademarked brand name.

2. Slogans 

Catchy phrases associated with your brand can be trademarked, such as McDonald's "I'm Lovin' It."

3. Logos 

Unique logos or symbols that represent your brand can be trademarked. The Apple logo is a prime example of a design mark.

4. Symbols

These include both words and designs, like the Starbucks logo, which combines text with a graphic.

5. Sounds

Distinctive sounds identifying your brand can be trademarked, such as the Intel chime or the MGM lion's roar.

6. Colors

Specific colors that are uniquely associated with your brand can be trademarked. For example, Tiffany & Co. has trademarked its distinctive robin's-egg blue color.

7. Shapes and packaging

A product's unique shape, design, or packaging can be trademarked if it serves to identify its source. The shape of the Coca-Cola bottle is a famous example.

8. Patterns and textures

Specific patterns or textures that are associated with your brand can also be trademarked, provided they're distinctive and non-functional.

Trademark classes

Trademark classes are a system used to categorize and organize trademarks based on the type of goods or services they represent. In the United States, the trademark classification system follows the Nice Classification, an international system many countries use. 

Trademark classes divide all products and services into 45 categories: 34 for goods and 11 for services. Each class covers a specific type of product or service. 

For example, Class 25 includes clothing, footwear, and headgear, while Class 35 covers advertising and business management services. When you apply for a trademark, you must specify the class or classes that best describe your product or service. 

So it's very important to check what category your goods or services come under. It's not necessary that your product/service be in only one class; it can be in multiple classes, too. So, before registering your mark, make sure you choose your classes correctly.

Examples of trademark classes

Here are a few examples of trademark classes to illustrate how they're categorized:

• Class 9: Scientific and electronic apparatus, including computers, software, and electronics.
• Class 25: Clothing, footwear, and headgear.
• Class 30: Staple foods, such as bread, coffee, and cereals.
• Class 35: Advertising, business management, and business administration services.
• Class 41: Education and entertainment services, including schools, training programs, and sporting events.

Want to learn more? See our full YouTube series on trademark classes (starting with class 1): 

Conducting a trademark search

Conducting a trademark search is essential before applying for a trademark to ensure that your desired mark is unique and not already in use. 

Start by checking for registered trademarks and pending applications using online databases like the United States Patent and Trademark Office (USPTO) Trademark Electronic Search System (TESS), or Trademarkia. 

Additionally, perform searches on search engines, domain names, and social media platforms to identify any unregistered but commonly used marks. 

For a comprehensive search, Trademarkia's expert trademark attorneys can help with accessing specialized databases and conducting a thorough analysis, including common law searches for unregistered trademarks. 

Trademark filing basis

When applying for a trademark in the United States, you must specify the filing basis of your application. The filing basis provides the legal foundation for your trademark application and indicates the status of your mark concerning its use in commerce. 

There are four main types of filing bases under the United States Patent and Trademark Office (USPTO):

Use in Commerce (Section 1(a))

This filing basis is used when you have already used the trademark in commerce. To apply under Section 1(a), you must provide:

• Specimen: A sample showing the trademark as it is used in commerce, such as labels, tags, or advertisements.
• Date of First Use: The date when the trademark was first used anywhere and the date it was first used in commerce.

Intent to Use (Section 1(b))

This filing basis is used when you have a bona fide intention to use the trademark in commerce but have not yet started using it. An Intent to Use application allows you to secure your trademark rights while you prepare to launch your product or service. 

Once you begin using the trademark, you must file a Statement of Use (SOU) or an Amendment to Allege Use (AAU) with specimens showing the mark in use.

Foreign registration (Section 44(e))

You can file for a U.S. trademark under Section 44(e) if you have a registered trademark in a foreign country. This basis requires:

• Copy of foreign registration: A certified copy of the foreign registration certificate.
• Translation: A translation must be provided if the foreign registration is not in English.
• Goods and services: The goods and services in the U.S. application must be the same or narrower than those in the foreign registration.

Foreign application (Section 44(d))

If you've filed a trademark application in a foreign country within the past six months, you can claim priority in the U.S. based on that foreign application. This basis allows you to benefit from the earlier filing date of your foreign application. You’ll need:

• Details of foreign application: Information about the foreign application, including the filing date and country.
• Priority claim: A declaration claiming the priority date of the foreign application.

Selecting the appropriate filing basis for your trademark application depends on your circumstances. If your trademark is already in use, Section 1(a) is the suitable choice. 

If you plan to use the trademark in the near future, Section 1(b) allows you to secure rights while preparing for use. For international businesses, Sections 44(d) and 44(e) provide mechanisms to extend trademark protection to the U.S. based on foreign filings or registrations.

Understanding the different filing bases helps ensure that your trademark application is correctly filed and your trademark rights are properly secured.

Process of trademark filing

After choosing your brand name, conducting a thorough search to identify any similar marks in the market, and checking the trademark filing basis to choose the appropriate one, you can proceed to trademark registration.

Prepare the application. Utilize Trademarkia to streamline the preparation process, gather necessary information, and provide specimens if applying under "Use in Commerce."

File the application. Trademarkia will handle your US trademark registration end to end, from submitting it online via the USPTO's Trademark Electronic Application System (TEAS) to managing all the requirements.

Examination by USPTO. An examining attorney reviews the application for compliance and potential conflicts. Trademarkia can help respond to any Office Actions issued by the USPTO.

Publication for opposition. If approved, the trademark is published in the Official Gazette for a 30-day opposition period. Trademarkia can assist in addressing any opposition.

Registration. The trademark is registered if no opposition is filed or if oppositions are resolved in your favor. For "Intent to Use" applications, submit a statement of use once the mark is in use.

Maintaining and renewing your trademark 

After your trademark registration process is completed, it's essential to maintain and renew it to ensure ongoing protection. 

Regularly use your trademark in commerce to avoid cancellation due to non-use. 

Keep an eye on the marketplace and new trademark filings to identify potential infringements and take legal action against unauthorized use to protect your brand. 

Adhere to renewal deadlines: file a Declaration of use between the fifth and sixth year following registration.

Also, renew your trademark every ten years by filing a combined declaration of use and Application for Renewal. 

Keeping up with these requirements ensures that your trademark remains valid and protected.

Conclusion

Securing a trademark is vital for protecting your brand and ensuring its unique brand identity. 

Conduct thorough research to confirm your mark's uniqueness, choose the appropriate filing basis, and prepare accurate documentation.

Visit Trademarkia for comprehensive trademark and general IP assistance, including guidance from a trademark registration attorney and a streamlined trademark registration online process.