10 Questions You Need to Answer for the Trademark Registration Process to Proceed Smoothly

Whether you file a trademark application with the U.S. Patent and Trademark Office (USPTO) on your own, with the help of a trademark attorney, or through any one of the many trademark filing companies online, you should be prepared to provide answers to the following questions:

1. Has the trademark been searched and cleared for availability?

Just because a trademark hasn’t been registered doesn't mean no one is using it! An in-depth trademark search will save you time and money in the long run.

2. Is the owner of the trademark an individual or an entity?

If your trademark owner is an individual, you’ll need to know their legal name and address.

When a trademark owner is an entity, you’ll need to know what kind of entity. A Corporation? A Limited Liability Company? A Partnership? A Limited Partnership? A Joint Venture? A Sole Proprietorship? A Trust? An Estate? You’ll also need to know the state under whose laws the company is incorporated, and, just like an individual, the company’s principal address.

3. Is the trademark owner going to be using the trademark, i.e., an operating company, or providing a license to another individual or entity, i.e., a holding company?

You’re going to need to decide who is actually using your trademark and who the goodwill associated with it will inure to the benefit of. That will prevent major headaches as to who owns your mark in the future!

4. Is the trademark a word? Is it stylized? Is it a design? Is it a logo? Is it a sound? Is it a color?

You need to decide what makes up your trademark. Once you submit your application, you’ll be bound to it. The words, designs, or other parts of your mark can be protected individually or together depending on how you are using them and how many trademark applications are in your budget to file. When submitting your designs, you can apply for protection in black and white for protection regardless of color, but if your trademark is presented in color, the color will be claimed as an inherent feature of your trademark.

5. Has the trademark been finalized or is it still being refined and worked on?

I repeat: once your trademark application is submitted, you will be bound to it! Do not file a trademark application until the trademark is final and you know for sure that this is in fact the trademark you will be using in connection with your goods or services. If you change a word, spelling, or design somewhere down the line, you’ll have to start the process all over again.

6. What goods and services are being/will be offered under the trademark?

Goods and services are organized under international classes. The filing fees you will pay are based on the number of classes you claim on your application. You’ll need to budget for multiple classes if your goods and services are diverse. The regular filing fee for one class of goods or services as of this blog post is $350.00 per international class.

7. Is the trademark already in use in interstate commerce?

Notice that word – interstate. Interstate commerce is necessary to file an application with the USPTO. The simplest way to be affecting interstate commerce is to be offering your goods or services to people or entities across state lines.

8. If the trademark is already in use, then what is the first date of use of the trademark?

There might be two dates of first use: one for intrastate commerce (inside your state) and one for interstate commerce (across state lines). The two dates can be the same, or they may be different. One may be earlier; one may be later.

9. Do you have specimens showing the use of the mark in commerce?

Specimens can be labels, tags, point-of-sale displays, advertisements, screen captures of websites, business cards, flyers, brochures, or even invoices. Some specimens might work and some might not, depending on the goods and services. They need to show the trademark as it is being filed, not in another form.

10. Are you interested in protecting your trademark in other countries?

Deadlines come up on you quickly once a filing is submitted, and you need to file within 6 months of the USPTO filing date when using the World Intellectual Property Organization (WIPO) to claim priority to your trademark filing. Most other countries around the world offer trademark protection not based on use but rather on a first-to-file basis, so this could be critical if you want to expand outside the United States.

Good Luck on Your Trademark Journey!