(Please note: I am not an attorney. What I am about to share is what I have learned through my experience in trademarking brands as a designer and business owner.)
As you establish your product business, you might wonder if you need to secure trademarks for your assets.
Trademarking is a big decision for your business, but it can have major advantages.
A trademark protects your business assets, such as your business name or logo, from being used by other businesses, both in your state and federally. You can trademark anything that contributes to your brand identity.
When you obtain a trademark, you tell others that your company’s products, logo, and name are your property and can only be used by you. You’ll also have the legal documentation to protect your intellectual property in case of a lawsuit.
So how exactly do you go about securing a trademark? Read on to find out what steps you need to take to protect your business assets.
Step 1: Consider Hiring a Trademark Attorney
Rather than working through the trademark process on your own, you might choose to hire a private trademark attorney. Any time you are dealing with legal issues for your business, reaching out to an attorney might be a good idea.
A trademark attorney can help you search for existing trademarks, file your application, provide legal advice, and represent you before the USPTO’s trademark trial and appeal board.
Step 2: Do a Trademark Search
Before you apply for a trademark, you or your attorney will need to do a trademark search using the Trademark Electronic Search System to make sure another business doesn’t already have a trademark for your name.
If there is a trademark for a name that’s similar to yours (even if it’s spelled differently), in your industry, and still active, you will most likely be denied a trademark and will need to choose a different name instead.
Step 3: File Your Trademark Application
Once you or your attorney determine that no one else has a similar trademark, you can file a trademark application through the Trademark Electronic Application System (TEAS).
There are different classes of goods, including pharmaceuticals, cosmetics, and more, as well as services. The application will cost between $225–$400 per class of goods and services, depending on your product and which type of filing requirements you are willing to meet.
For example, if you offer only one type of product, you will most likely only need to pay for one class. But if you provide products and services, you’ll probably need to pay for two classes.
Step 4: Wait for Acceptance
3 months after you file your application, it will be reviewed by an examining attorney at the USPTO. After about a month, it will be published for opposition in the Trademark Official Gazette.
After that, businesses will have two months to oppose your trademark if they think it will hurt your business. If it is not opposed, you will receive a notice of allowance.
Step 5: Submit a Statement of Use
Once you receive a notice of allowance, you must submit a Statement of Use—a signed form declaring that your mark is in use under the terms you applied for.
You have to submit your SOU or file for an extension within six months of receiving your notice of allowance. Otherwise, your application will be considered abandoned. (If your application becomes abandoned, you will have to pay $100 to continue the application process.)
After you file an SOU the USPTO will evaluate it. If it is approved, they will register your trademark two months later. If it is not approved, you will have six months to respond and correct the issues with your SOU.
Step 6: Maintain your Trademark
If your trademark is approved and registered, it will remain valid as long as you follow the steps to maintain it.
Between the fifth and sixth year after you receive it, you will have to file another SOU form with evidence that your trademark is still being used and pay a $125 fee per class of goods and services.
You will also have to file another SOU and an application for renewal every ten years, along with a fee of $400 per class of goods and services.
If you don’t maintain your trademark, it will expire, opening the door for other businesses to file trademarks with your name.
What if My Trademark is Denied?
If your application is not approved, you will receive an office action from the USPTO explaining why.
From there, you have six months to send a response letter if you feel like you can correct the issues and meet the requirements. A good rule of thumb is to check with an attorney and ask how likely they think it is for your trademark to be accepted. If it’s a less than 60% chance, it’s probably better to choose a different name instead.
If you do decide to send a response, they might accept it and publish your trademark. Or they might decide that your response doesn’t overcome their objections. In that case, you’ll receive a final letter refusing your application.
You will then have six months to appeal their refusal if you choose. If that appeal is accepted, your trademark will be published for opposition. If it is rejected, your appeal will be processed and your application will be denied.
Weigh the Pros and Cons
As you can see, the process to acquire a trademark can be time-intensive and very expensive. Even if your application gets denied, you won’t get the cost of your filing fees back.
But since it can protect your business assets, it might well be worth the cost and effort. Dealing with a lawsuit later down the line would likely cost more money (not to mention more stress!)
You’ll want to make sure that you are fully confident about your business name and what product you provide before you apply so that you don’t waste time, effort, and money.
If you aren’t sure about your business name, check out our post The 7 Step Fool-Proof Process to Naming your Business or Product!
Are you starting a food or beverage? Let us help! For more resources, check out our food packaging design guide.
Crème de Mint has specialized in beauty, food and supplement packaging design for more than 15 years. Our CPG branding agency knows how to create compelling, craveworthy designs that can help your brand stand out! Book a call today to chat with us about your packaging design.