Trademark Basics: How to Submit a Trademark

What is a trademark? 

A trademark is a word, phrase or symbol that functions as a brand image or indicator. It includes words, names, images and symbols that identify a company or brand and distinguish it from other companies or brands. “Trademarks can be used to protect a business name, logo, hashtag, slogan, color, sound clip and trade dress (think Hard Rock Hotel — their shape is a trademark),” explained Lauren A. Morgan, Esq., an expert in IP law and attorney at Activated Law.

The concept dates back to ancient times when skilled artisans working with metal or ceramic would imprint their distinct maker’s mark on a finished product. Even today, you can often distinguish between a high-quality piece of jewelry and a knockoff by the maker’s mark. 

Registering your IP with the government gives you a registered trademark, allowing legal enforcement for both physical products and digital assets. “Being proactive not only protects your brand but also keeps you from being sued for infringing on someone else’s brand, even if that brand came after yours but was trademarked first,” Morgan noted.

How do you submit a trademark?

Take the following steps to pursue a registered trademark for your assets.

1. Search the trademark database.

Your application will be rejected if an existing trademark is identical or confusingly similar to the one you’re trying to get. To ensure this isn’t the case, visit the United States Patent and Trademark Office’s (USPTO’s) online Trademark Center, select Search the trademark database and perform a search.

If your search returns results that are too similar to your proposed trademark within the same class of goods or services, make changes and conduct another search.

2. Start a trademark application.

1. From the Trademark Center’s main page, select Apply to register a trademark. If this is your first application, select Create a USPTO.gov account and follow the prompts to create an account. If you already have a USPTO.gov account, sign in to start your trademark application. 
2. You’ll be asked if you’re filing a TEAS Plus or TEAS Standard and whether or not an attorney is filing this application. If you’re unsure which option to select, the USPTO provides a helpful comparison chart on the Trademark Center’s website.
   
   1. TEAS Plus: This option has a lower filing fee but requires strict adherence to USPTO requirements
   2. TEAS Standard: This option has a higher fee but offers more flexibility in completing the application.

3. Select Continue when you’re ready. 

4. Complete the applicant information.

1. Next to Owner of the Mark, enter the trademark’s owner. This can be an individual or the legal entity under which your business operates. 
2. If applicable, select a qualifier, such as DBA or AKA.
3. Select an entity type, such as individual or corporation. 
4. Enter your contact information, including a mailing address, email address and phone number. 
5. Select Continue when you’re done.

5. Select and submit your mark information.

In this step, you’ll select your mark format, provide the required image or audio file and submit any supporting specimens to show how your mark is used in commerce.

• Standard characters: Choose this format if your mark consists only of words, letters or numbers in any font or style. This option provides broad protection, regardless of how the text is displayed. Enter the mark text in the display box provided.
• Special form: Choose this format if your mark includes specific fonts, colors, logos or other visual design elements. Logos or stylized text, for example, fall under this category.

If you select this option, you’ll attach a hand-drawn or computer-generated image in JPEG format that meets USPTO size and resolution requirements.

• Sound mark: Select this for audio-based trademarks, such as the MGM lion’s roar. Submit an audio or video file in WAV, MP3, MPG, WMV, WMA or AVI format. Audio files must not exceed 5MB and video files must not exceed 30MB.

6. Submit a specimen (if required).

You may need to provide a specimen to demonstrate how your trademark is used in commerce. The type of specimen you submit depends on the mark format:

• Standard or Special form marks: Submit a graphic or photograph showing your mark as it appears on goods, such as packaging and labels, or services like marketing materials and websites.
• Sound marks: Include the audio or video file as part of your submission.

Note: If you’re filing an intent-to-use application, you don’t need to submit a specimen at this stage. You’ll submit it later when filing a Statement of Use.

7. Indicate your mark’s goods and services.

In this section of the TEAS, detail the goods and services for which you’ll use your mark. Follow the Trademark ID Manual as a guide to select pre-approved wording that matches your goods and services. This can streamline the application process and reduce the likelihood of errors or additional scrutiny. If necessary, you can detail your goods and services in your own words. However, ensure your description is clear, specific and concise to avoid rejection or delays.

After you submit your TEAS form, you can’t change your trademark’s goods and services.

8. Indicate your trademark’s filing basis.

Choose one of the four bases below:

1. Use in Commerce: Select this option if your trademark is already being used in connection with goods or services currently offered in commerce.
2. Intent to Use: Choose this basis if you plan to use the trademark within the next four years. Note that you must begin using the trademark and submit proof of use (specimens) before the registration process can be completed.
3. Foreign Application Exists for the Same Goods or Services: This basis applies if you have filed a trademark application in a foreign country within the past six months for the same goods or services.
4. Foreign Registration Exists for the Same Goods or Services: Use this basis if your trademark is already registered in a foreign country. You must provide details of the foreign registration, including a copy of the foreign registration certificate, as part of your U.S. application.

9. Submit your application.

After paying your filing fee, which can be up to $400 per class of goods or services, the USPTO will refer your application to an attorney, who will review it within three months. You will be contacted if you must remedy any mistakes before your application reaches the USPTO’s weekly publication, the Trademark Official Gazette, where other trademark holders can counter your application if it appears similar to their marks. 

If you counter any challenges successfully (or face no challenges), your trademark will be approved after the months to years it can take to address a trademark lawyer’s concerns adequately.

What is trademark strength?

A trademark has an associated “strength” that shows how defensible it is as your unique mark vs. how widely other entities can use it. 

Consider the Apple logo — an apple with a bite taken out of it. It’s a strong trademark because other entities can’t use that specific symbol or even somewhat similar symbols defensibly. Apple has been involved in many trademark lawsuits preventing other companies from using logos that are simple graphic designs of a single fruit, such as the pear-shaped logo for a meal prep app called Prepear, arguing that they will confuse customers.

Meanwhile, Apple trying to trademark the word “apple” would be weak. A bakery using apples does not violate Apple’s registered trademark if it describes its pies as apple pies. Nor is Big Apple Bagels in violation for using New York City’s nickname.

What makes a strong trademark?

A strong trademark is entirely original. The brand name Xerox is an example. No entity was called Xerox before the company created and used the name in its branding. 

Strong trademarks are either completely unique words or images or ones that have a unique use. Returning to the Apple example, the word “apple” is far from unique. However, its use for a technology company is unique, making it a strong trademark. If another company wanted to use the name Apple Technology, it would be sued for trademark infringement.

How can you protect your trademark?

Registering and defending your trademark is crucial to protect your brand.

• Register your trademark: A registered trademark lets you make your mark public knowledge and gives you precedence against future similar marks being registered.
• Defend your trademark: You must defend your trademark if you want to preserve it. If you allow other brands to use something too close to your trademark for too long, your trademark becomes diluted and no longer as easily defensible. Too-broad usage of a too-broad trademark means you lose the ability to claim the trademark. If you see another company using your trademark, start the legal process by sending them a cease-and-desist letter. If they refuse, you may need to hire an IP attorney.

How is a copyright different from a trademark?

While trademarks are words, names, images and symbols that identify your brand, copyrights protect unique created works. Unlike trademarks, you can’t copyright specific words (barring unique brand identifiers like “Xerox”). 

When choosing whether a copyright or trademark provides the best protection for your business, keep the following considerations in mind:

• Copyright protects complex creations: Copyright doesn’t protect words, typefaces, logos or simple designs. Instead, it protects more complex creations, like entire blog posts, graphic designs and other images. 
• Copyright protection is automatic: Copyright is automatic after you create and publish a protectable work. For example, when you publish a blog post, the copyright for that post is yours. When you create an image for your blog post, you own the copyright over that image. A trademark, on the other hand, requires registration.
• Consider applying for a copyright online, regardless: While copyright registration isn’t required, experts strongly advise applying for a copyright online because unregistered copyrights are not legally protected. Registering for a copyright creates a record of your copyright with the U.S. Copyright Office. 
• Understanding fair use is crucial: Copyright protects your image or writing from unapproved usage, but it doesn’t prevent all uses under the doctrine of fair use. What constitutes fair use is a complex and context-dependent legal concept. Generally, others cannot take your image and use it as their own, but they may edit or repurpose it under specific conditions, such as satire, commentary or criticism. Simple edits, like changing the hue, do not transform an image enough to qualify as fair use. This is why you can’t run a Google image search for images to use in blog posts — you must find those allowable for use under an appropriate license, such as Creative Commons.

Jennifer Dublino contributed to this article.