Trademark FAQs

What is a trademark?

A trademark is a word, phrase, symbol, or design (or a combination of those) that identifies or distinguishes the source of goods and services (who made it or provides it). A trademark can be your business name, a course name, a slogan, or any other specific mark that tells the consumer who the good or service is coming from. It helps consumers differentiate your goods from those of your competitor so the public knows who’s selling it.  

Do I have to register a trademark to use it?

Registering your trademark is not required. But it does provide a lot of protection and benefits you don’t get otherwise. Keep reading to find out more about the benefits of registration. 

Why should I register a trademark?

Registering your trademark with the USPTO provides legal protections for your business and your brand. It gives you legal rights you don’t have without registration. When you register your trademark, you’re putting everyone else on notice that you own your mark. You have the exclusive right to use your trademark in connection with the type of products or services you provide. You get to use the ® trademark symbol with your mark and prevent others from using your mark. Registering your trademark also makes it clear that you take your business and your brand seriously, which helps you show up as an expert and an authority in your field. 

Will registering a trademark stop someone else from using my trademark?

Registering your business name or program name means that you own the right to use that mark in your particular area of business (in the class you registered under). You then have the right to stop others from using the mark in their business if they are selling similar products or services. You won’t be able to stop someone from using the name or a similar name in a different industry or with completely different goods or services. 

Do I have to be using a mark to register it?

To complete a registration, you have to be using it in connection with goods or services for sale. However, if you aren't using your mark in business yet but have a legitimate intention to start using it, there is a different type of application you can file called an Intent to Use application. Instead of issuing a registration, the USPTO will issue a Notice of Allowance. You then have 6 months to file a Statement of Use showing how you are using your mark in business or file a 6-month extension. Filing an Intent to Use application puts others on notice that you intend to claim ownership of your mark.

If my business isn’t based in the US, do I need to register my trademark in the US?

Yes, if you do business in the US. It’s important to protect your brand everywhere you use it, so if you have US customers or clients, you’ll want US trademark protection. 

What's included in your trademark registration package?

My trademark registration service is designed to be completely full-service. I take it all off your plate and make it as easy as possible to register your trademark. Here's what's included:

  • Comprehensive US trademark search and analysis for one trademark (plus a complementary second search if the first trademark is unavailable)
  • Preparation and filing of one US trademark application 
  • USPTO application filing fee for one class
  • Trademark application monitoring and updates
  • Responses to all Office Actions from the USPTO
  • Unlimited support via email regarding your application
  • Preparation and filing of a statement of use and extension requests for intent-to-use applications (additional government filing fees may be required)
  • A trademark registration certificate from the USPTO
  • Guidance on how to maintain and protect your registered trademark

What's not included?

Sometimes additional filing fees will come up that are not already included in the price. We’ll always talk about any additional fees ahead of time so you know what to expect.

Although rare, it’s possible that someone will oppose your trademark registration once we get to the publication stage. It’s also possible that the USPTO may issue a final refusal of your trademark registration despite our best efforts. In these cases, you may decide to file an appeal or defend your mark against opposition. These issues are beyond the scope of a trademark application and are not included in the one-time application cost.

I've done my own search already. Do I really need another clearance search?

Yes! While it’s not technically required, a comprehensive trademark search will greatly increase your chances of a successful registration. Many of the trademark registration or search services only include a “knockout” or “direct hit” search. This means they typed the exact mark into the USPTO’s search database - which only returns an exact match. Slight variations in spelling or usage of your mark won’t show up on that type of search, but will impact your chances of successful trademark registration.

My comprehensive search looks at different variations of your trademark on the USPTO database and across domain names, websites, and social media platforms, where other businesses may have acquired some rights to the mark even if they haven’t registered. 

I then analyze the results for you to determine the likelihood of success and potential objections we’d receive from the USPTO before we move forward with the trademark application. Running a comprehensive search now will save you time and money later. 

How long will this take?

The trademark registration process typically takes around 8-12 months, but it can take longer depending on the circumstances. The timeline depends on multiple factors, including how quickly you provide the information we need to run the search and file the application, whether the mark is currently in use, whether the USPTO issues any Office Actions, and if anyone else opposes the registration. 

What’s the registration process like? 

Step 1: Finish Your Intake. 

When you decide you'd like us to work together, your fist step will be to pay your invoice, sign an Engagement Letter, and complete our intake form. The intake form gives me all the information about your business that I'll need for the next steps in the process.

Step 2: Comprehensive Trademark Search

The first step in the trademark registration process is checking that your mark is available. We'll run a comprehensive trademark search that looks for similar marks in the USPTO database, on the web, and across social media. I'll analyze the report for you and let you know if it's safe to move forward.

Step 3: Trademark Application

I'll use the information from your intake and our discussions to complete your trademark application. I'll send you a complete draft of the application for your approval before submitting it. The USPTO requires a filing fee of $275 per mark per class (increasing to $350 as of Jan. 2021). One fee is included with your payment to me.

Step 4: Wait 4-5 months

After we submit the trademark application, there's a 3-4 month waiting period before anything else happens. After that period, an office examiner will be assigned to your application. It usually takes the office examiner another month or two to examine your application.

Step 5: Respond to Office Actions

If there are any issues with your application the office examiner will let me know with a notification called an Office Action. I'll respond to all Office Actions on your behalf. This process can take months depending on the nature of the Office Actions.

Step 6: Your Trademark is Published

Once any Office Actions are resolved, your trademark will be published in the USPTO's Trademark Official Gazette. Other parties will have 30 days to oppose your registration.

Step 7: Your Trademark is Registered

If no one opposes your mark during the publication period, your trademark will be officially registered. This can take a few weeks after the publication period ends. I'll forward you your official trademark registration certificate once I receive it.

Step 8: Maintain Your Registration

Your trademark registration lasts indefinitely as long as you maintain your registration. You'll have to file a Statement of Use 5 years after the initial registration, and additional filings every 10 years after registration. I'll help you keep track of these deadlines and file the paperwork for you if you want.

Is trademark registration guaranteed?

Unfortunately, I can’t guarantee that your trademark will definitely be registered. I take every step I can to increase the changes of registration and determine the risks ahead of time. If you decide not to move forward with registration after I run the search because the trademark is likely to be rejected, I’ll issue a refund minus $700 for the cost of the search and determination. However, even with low-risk applications, there’s always the possibility that a conflict will arise later. 

How long will my trademark last?

A trademark registration will last indefinitely as long as you continue to use the mark in business and file the required maintenance forms. You’ll need to file an Affidavit of Use five years after registration, and additional forms every 10 years after registration to keep the trademark registration active. I’ll remind you of these deadlines so you don’t miss a beat. 

Do I have to have a lawyer to file a trademark application? 

Anyone can file an application for a trademark. However, the application process is complicated and it’s easy to make a mistake. If the USPTO has any questions and responds with an initial refusal or an office action, it can be overwhelming for someone who doesn’t have the training to deal with it. Unfortunately, a lot of people will just give up when all they need to complete the registration is a good legal argument! 

How much does it cost?

The Brand Protection Package is a one-time fee of $2,500 or three monthly payments of $915 to register one mark. This includes one filing fee for one class of goods or services ($275, increasing to $350 as of Jan. 2021). I also have packages for registering more marks at once for a discounted price. 

Why does this cost more than some other trademark registration services I’ve seen?

Like all things in life, you get what you pay for. Many legal services websites will file your trademark registration for a few hundred dollars. But if you have questions or need help after the application is filed, you’ll have to pay extra. Not to mention that they don’t pay enough attention to how you run your business and often make mistakes in the registration process that I avoid by actually getting to know your business. 

You’ll also have to pay more for any office actions - and even if they say they include office actions, they usually only mean non-substantive office actions. Most trademark applications will receive at least one substantive office action, so you’ll end up paying even more for that. All office actions, substantive and non-substantive, are included in my trademark package.  

Does it include all government fees?

The Brand Protection Package includes one USPTO filing fee for one class of goods or services. If you want to register in more than one class, you’ll have to pay an additional fee per class. The filing fees are typically $275 per class, but are scheduled to increase to $350 as of January 2021.

You will also need to pay additional filing fees if you file your application before you start using your mark in commerce - this is called a 1B Intent-to-Use application. You’ll need to file a Statement of Use about 6 months after the application is filed, or request a 6-month extension. The USPTO charges a filing fee of $225 per class for the Statement of Use and $100 per class for each extension request. 

Can I use the ™ or ® symbol?

The ® symbol can only be used with marks that are federally registered - the R stands for registered. You can’t use this symbol with your trademark until it’s actually registered, meaning you have the trademark certificate. You can’t use it while the application is pending. 

You can use the ™ symbol with any trademark, regardless of registration. Using the ™ symbol next to your business name, program name, or logo lets other people know that you claim ownership of that mark and helps you assert your limited common law trademark rights before you’ve registered your mark. 

If my business isn’t based in the US, do I need to register my trademark in the US?

Yes, if you do business in the US. It’s important to protect your brand everywhere you use it, so if you have US customers or clients, you’ll want US trademark protection. 

How do I get started?

Book a consultation call here!