To register a trademark, you need to either (1) have used a mark (could be a brand name, a company logo, or even a unique color) in association with your good or service or (2) have a bona fide intent to use it.
How does this translate in plain English?
Where to register my trademark?
If you are thinking about registering a trademark, you should first know what trademark is. Trademark registration is available at state and federal level in the U.S., but state registration has become obsolete especially because of the internet. So, let’s focus on a trademark registration with the United States Patent and Trademark Office (“USPTO”).
Virtually anything can be a trademark.
Just about anything that you use to set your good or service apart from competitors can be a trademark.
It’s a less known fact, but Tiffany blue is a registered trademark of Tiffany & Co. Yes, I’m not kidding. If you’re a jeweler, you may not use this color on your boxes, bags, or even on your website.
FYI, the USPTO allows registration of sound, color, and scent in addition to letters and drawings (or a combination of letters and drawing).
If you sell or offer something to others, you might already have a legally recognized trademark.
The U.S. law provides common law trademark rights, so you do not need to register a mark in order to have a trademark right. Nevertheless, having your trademark registered comes with many benefits, including effectively thwarting potential knock-offs.
You use a mark when you sell a good or offer a service in association with the mark.
Using a mark means you place the mark somewhere to identify that a good or service is originating from you. You could be a producer, a manufacturer, a provider, a dealer, or a retailer. It does not matter what your role is as long as you have control over it.
In other words, when everyone’s using the term “smartphone” to indicate what they are selling is a phone with a mobile OS allowing you to install third-party applications, you can’t say Smartphone is your trademark even if you coined the term.
The distinction between “sold” or “offered” is important because you can register a trademark only after you actually sold a good. On the other hand, if you’re a retailer and opened a retail store with a signage, you can register whatever’s on the signage as your servicemark right away. (Servicemark is just a subcategory of trademark and tells you that it’s registered for use in association with services.)
Associating the mark and a good/service can be a tough question. However, in general you can simply ask yourself as a consumer. Would typical-consumer-you identify the good or service as originating from you because of the mark? The typical way of associating a mark with a good is printing the mark on the label. For a service though, you often need to rely on advertisements and brochures.
What If I Haven’t Used the Mark?
No worries. The USPTO allows you to apply for a registration of a mark that you intent to use. Bona fide intent is just a fancy way of saying that you should not lie about your intent. If you sincerely plan to use a mark for a good or service, you can (and should) act before someone else register it first.
The Intent-To-Use (“ITU”) application goes through two steps. First, you apply for a mark, and the USPTO examines if the mark deserves registration. After your mark passes the examination, you have six months (can be extended for another six-month period 5-times; total 3 years) to prove that you started using it. Only when you provide the evidence of use, the registration number will be issued.
This second step of proving your use happens simultaneously when you apply for registration of a currently-used mark. So, the regular non-ITU application tends to be much faster and more cost-efficient. However, you want to go the ITU route if there’s a chance that someone else might be starting to use the mark that you intend to use.
Now, You Simply Fill Out TEAS online.
No matter you’re an attorney, an employee, or a business owner, you will be using the USPTO’s Trademark Electronic Application System (“TEAS”). TEAS has been around for a while, and it’s now a default option for all applicants. It automatically verifies whether you filled out all the required fields and also have hyperlinks to the glossary.
Although the entirety of the online form might not be self-explanatory, you only need to fill out required (typically marked red) information. If your application is somehow incomplete, the USPTO will issue an office action asking for more information or clarification. It might cause some delay, but it does not affect your right.
It is quite common for a non-lawyer to apply for a trademark registration, and the USPTO is a fully fee-funded agency. So, if you have a question, just ask them. You’re their customer. As long as it’s about “registration”, they will get you where you want to be. (Note: if you have a question about “rights” rather than “registration”, you should consult a lawyer.)
Now, go to Apply online | USPTO and take some time to fill out the form as complete as possible. If you feel not ready yet, here’s some more information about TEAS: