Trademark Registration Guidelines

After you’ve brainstormed a catchy company name, you need to take the steps to legally claim that name and protect your ownership of it.  The way to do this is to register your name, which constitutes a trademark, with the United States Patent and Trademark Office (USPTO).

As with all things at Starting it up, let’s break it down into an easy view of what you need to know prior to filing the registration application.

First, trademark search.

For you to claim a name, it has to be available and not already claimed by someone else.  A combination of Google + the USPTO’s TESS system should be sufficient for the majority of trademark searches.

In addition, the name you want to trademark must not be

(1)    Merely descriptive or,
(2)    Likely to be confused with an existing trademark, unless they are in completely different industries.

Second, what class of service or goods?

The company behind your trademark’s name must be classified into one of 42 classes of services or goods to be legally filed.  These range from delivery, to transport, to machines and machine tools – there is likely one that fits your company well.

Third, what mark format?

There are three types of formats for trademarks:

(1)    Standard character formats: considered a normal name of a company.
(2)    Stylized/design formats: best thought of as a logo.
(3)    Sound marks: essentially trademarks how the name sounds – think of it as legally preventing name homophones.

Fourth, intent to use, or use in commerce?

This concerns the status of your trademark, and is simpler than it sounds.  It mostly impacts what filings you must make to the USPTO.

If you’ve started to use it in representing your company, it’s considered “in commerce,” and you will need to file proof of the mark being used – that’s called a specimen.

If you haven’t started using your mark to represent your company, you’re considered “intending to use,” and must file an allegation of use amendment.

Fifth, do you need a disclaimer?

A trademark disclaimer essentially states that even though parts of your mark are not trademark-able, your mark as a whole will be protected.

For example, I want to trademark the name “Peizilla’s law blog.”  I would then need to file a disclaimer for the words “law” and “blog” because they are words that can’t be trademark registered on their own.

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