How to Register a Trademark with the United States Patent and Trademark Office (USTPO)
Register your Trademark
A trademark is a design, string of words, or both that is associated with a person, cause, or company. The trademark signifies that the owner has exclusive rights to use the mark and no one else is allowed to use it by law.
Everyone is familiar with trademarks and just do not realize it. McDonald's, Wendys, Grove City Garage Door, Hardee's, Carl Jr's, Whitecastle, and the rest are all trademarked with the United States Patent and Trademark Office. Each of the corporations have applied for exclusive rights to these marks in commerce, and it is illegal to use their marks. Each corporation has the right to sue if another person, or company is using their mark.
Unfortunately in today's online market, I have not been able to find any person that cares enough about not using a trademark that does not belong to them to gain Search Engine Optimization (SEO) rankings in a certain area. I understand that you cannot do anything about a person using your trademark as a keyword; however, if you are a legitimate business you should not have to use someone's trademark to gain rankings.
Are you wondering why people apply for trademarks?
A trademark helps the owner protect their brand online and off line. In a world that has went to an online market, there are very few protections in the world. The only way Google, Microsoft, Bing, Yahoo, and other search engines will help out is in their pay to click advertising. The pay to click advertising is a paid advertisement for each search engines. Without a verified trademark with the USTPO office, Google, Bing, and other search engines will let anyone use anything in their advertising.
For example, if I were to get a Google pay to click account, I could set up an ad campaign saying in the Headline Title that I am McDonalds. Google will protect the trademark owner by removing my ad stating I am McDonalds once the owner submits a trademark complaint form. If the person or company does not own a trademark with the USTPO office, they Google will send an email back stating you do not own the trademark and they will not remove the ad using your trademark.
Hire a Lawyer
Before you go any further in this hub, be aware that I am not a trademark lawyer, and when I registered our trademark it was done in hopes that we would not have to hire a lawyer. However, after meeting with a trademark lawyer on March 2, 2015, we have discovered that we missed a lot of classifications we could have done, and now have hired a trademark lawyer to fix our mistakes. As far as costing a lot of money to fix our mistakes, it can be chalked up to a learning experience, and we will pay to have it fixed as well as have our trademark protected. Hiring a trademark lawyer will keep you from making the same mistakes we did in our filing process. I admit that there are mistakes that will cost money to fix but in hind-site at least we have a registered trademark to protect!
If you decide to proceed with any of the steps below, just be aware that you may have to hire a lawyer to get the job done, so it is completely your decision to try to get a registration completed. It will cost you a non-refundable fee though if the USTPO office does not register your mark. So think about the risk of spending, how much could you spend and not get the mark? Or do you invest in the lawyer to get the mark done right the first time?
Start Here, Step One
The first step in registering your trademark is to search the trademark system to see if anyone else has registered the trademark or not.
Start with a basic word search for the trademark you wish to have. If nothing comes back then I would say you are good to go! Now you can either do this yourself or you can hire a lawyer to start the process.
I personally opted to file a trademark filing myself, we decided to trademark a simple string of words: Grove City Garage Door.
Next, Step Two
Read through everything on the filing page. Read the costs, timelines, how the process works, and how to check your status. It is very important once you start the filing process to abide by all of the timelines given. If you miss a timeline your trademark application will be deemed as abandoned and you will have to start the process all over again.
I printed the application, gathered all of my information, and submitted the application through the online portal. The application will ask if you have used your trademark in commerce for (5) years or if you intend to use the trademark in the future. We had already used our trademark in commerce for 12 years at the time I filed my trademark application. I marked used in commerce for more than (5) years. The lawyer who gets your application will check all of your claims of use. I submitted the application, the mark I wished to have registered, and proof of use with the articles of incorporation and the web site we use our trademark on.
When you submit your trademark application there is a non-refundable application fee. Make sure you are aware of the cost of how much your trademark will cost. The site tells you what to expect, and you designate your trademark classifications. My trademark application cost $275 for the classification I chose.
Checking Status, Step Three
Once you have completely submitted your trademark application, the third step is the hardest step, you will have to check your trademark application status, and patiently wait. Step three is the longest part of the process. You should receive an email if you submitted your application online; however, it may be 3-4 months before you get your first email from the lawyer assigned to your file. So it is up to you to check the status of your application online. I checked my status on a weekly basis, I didn't want to miss any dates accidentally and have my application marked as abandoned.
First Email, Step Four
Once you receive an email from the lawyer assigned to your file, this then starts step four. The lawyer will ask questions regarding your application. There are timelines in the emails that you must follow in order to answer.
When I received my email questions, I tried to make my response within a (24) hour period. This process can drag out for months on end if you do not answer quickly. The lawyers will give you (6) months to answer an email. I think it would depend upon how hard the question is to answer on how quickly you answer. And if you are unsure on how to answer, I would suggest finding a lawyer to help you at this point. Fortunately for us, our questions were easy to prove because we had been using the trademark for a long period of time.
Published, Step Five
If you answered your assigned lawyer's questions you will receive an email that your trademark will be published in the Gazette and given the date of publication. The Gazette publication is the notice to the public that you have applied for a trademark. Before your trademark is assigned a finalized trademark registration, it will be published for opposition for (30) days in the Gazette. If you do not receive any notification of anyone opposing your trademark, then you will get a registration number. If any opposes your mark, you will then have to defend your application in a trial.
Luckily we were able to go through publication without any opposition, so I do not have personal experience with the trials and appeals section.
Trademark Registered, Step Six
You will receive your Trademark Registration papers in the mail from the USTPO office if you passed through the entire process without opposition from publication in the Gazette. Now it is up to you to protect your trademark. If you find anyone using it online or offline you should contact the persons using your mark, ask them to cease and desist, and if that doesn't work then you will have to hire a lawyer to help protect your mark. The USTPO office will not help protect your mark, it is up to you to protect your mark. I hope this has been helpful to someone who wants to register a trademark. If you are unfamiliar with trademark and copyright laws, you should get familiar with them.