Steps to Follow Before Applying for a Trademark

updated on Feburary 20, 2024 ⋅ 4 min read

If you are starting a new business, it is important to be aware of all the required steps to protect your business. One way to do this is to trademark your business name, logo, product, design, or slogan. Some of the biggest companies in the world have trademarked their names, logos, and products. This includes Coca-Cola, Apple, Nike, Ford, and many more. The trademark registration process can be complex, so it is essential to understand the requirements and follow them correctly. This article will provide information on what steps you need to take before applying for a trademark and why these steps are necessary.

Start With a Trademark Search

If your trademark seems confusingly similar to another pending or registered trademark, the United States Patent and Trademark Office (USPTO) will most likely not register it. Therefore, it is essential to conduct a trademark search before filing your application to avoid this situation. A trademark search will tell you if the name or design you are using for your business already exists as an existing mark. By taking the time to do a trademark search, you can avoid applying for conflicting marks and spend costly federal fees, which are non-refundable.

To perform a trademark search on the USPTO database, you will need to search your anticipated mark on the Trademark Electronic Search System (TESS). The TESS contains all federally registered trademarks in the United States. If you find a similar trademark covering related goods or services, it will be very challenging for you to register your trademark. However, this does not imply that your mark is available for registration if you find no similar trademarks in the TESS.

To ensure that your mark is available for registration, you must perform a comprehensive trademark search that goes beyond simply checking your mark on the USPTO trademark database. A comprehensive trademark search provides search results that include active and pending federal trademarks, common law trademarks, state-registered trademarks, and marks not officially registered with the government. This way, you will feel confident that your trademark is available for use at the time of filing.

You can also hire a trademark search company to do a comprehensive trademark search for you. But, again, the cost will vary, depending on the size and scope of your business.

How Much Does a Comprehensive Trademark Search Cost?

Trademark search companies use various methods to search for existing trademarks. Some examples include: searching federal and state trademark databases, searching company names in the yellow pages telephone directory listing, searching database listings from trade associations, and searching the internet. After a comprehensive trademark search, you will want to review the results to see any potential conflicts when you receive your results. This service generally starts from around $200 and goes up, depending on the size and complexity of your trademark search.

Complete the Required Documents

After you have done a trademark search and confirmed that there are no conflicts, you will need to complete and submit an application with the USPTO. The application consists of basic information about your trademark, including the mark itself, the goods and/or services associated with it, the date of first use, your contact information, and proof of use of the mark for an ‘in-use’ basis application. If you are applying for a mark on an ‘intent to use’ basis, you must submit your statement of use within six months from the date your application is filed or request an extension.

For your ease, we’ve made a checklist of what you’ll need for your trademark application:

  • A drawing of the mark in .jpg format if registering a stylized mark or just typewritten words if registering a standard character mark.
  • Determine the USPTO class(es) associated with the goods and/or services. These are the categories of products and/or services your business offers under which your mark would receive trademark protection.
  • The date of first use of the mark if filing on an ‘in-use’ basis.
  • Trademark ownership information.
  • Proof of use if you’re applying on an ‘in-use’ basis. If you have not used your mark in commerce yet, you can apply an “intent to use” basis and submit a specimen later.
  • The application fee of $250-$350 for each class of goods and/or services.

Consulting a Professional

Suppose you feel overwhelmed or have any specific questions about the application process. In that case, you can also seek help from a trademark attorney or an experienced trademark filing company for legal advice. They will be able to help you complete the application, answer any questions you may have, and guide you through the entire process. You can also find resources online; however, if you are unsure of the accuracy or quality of information, it’s best to contact a professional to avoid mistakes with your application.

For those who are looking to protect their business name, logo, or product design, our comprehensive trademark search service can help. Our team of experienced trademark research analysts will do a thorough trademark search of all possible conflicts to make sure your mark is available for use.