Whether you're registering a word mark, design mark, or a combination word-design mark, you should give careful consideration to the mark you're registering before starting the application process. Filing fees with the USPTO are non-refundable, and it's often the case that you won't be able to make changes to your mark once you've started an application.
How can you make sure your trademark is strong? For word marks, there's a general rule that "arbitrary" words such as "APPLE" (when used for computers) or "fanciful" (i.e., made-up) names such as "XEROX" are strong. On the other hand, "descriptive" or "generic" words such as "PIZZA SHOP" (when used for a pizza restaurant) are not as strong.
Finally, before you start using a mark, you want to make sure that you're not infringing on someone else's trademark rights. It's a good idea to perform searches with the USPTO, business databases, and search engines such as Google.
Consider hiring an attorney
Because the searches described in the last step can be complicated, you may want to consider hiring an attorney. A trademark attorney will also be able to help you with all the remaining steps. This is a good way for you to save time and energy, and it will also give you peace of mind, knowing that you are complying with USPTO requirements.
Please feel free to call Elliott & Davis, PC with any questions. 412.434.4911 ext 25. Consultations are always free. www.elliott-davis.com
Choose an application type: intent-to-use or use in commerce
When you get ready to file an application with the USPTO, you have to choose whether you are filing an intent-to-use (ITU) application or a use in commerce application.
According to the USPTO, the requirements for these applications are as follows:
ITU - "must include a sworn statement (usually in the form of a declaration) that you have a bona fide intention to use the mark in commerce. A properly worded declaration is included in the USPTO standard application form. The applicant or a person authorized to sign on behalf of the applicant must sign the statement." (Additional requirements can be found on the USPTO website.)
Use in commerce - "must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark."
Complete the application and pay the filing fee
The application for trademark registration can be found on the USPTO website. You can file online or using a paper form. Application fees range from $275 to $375, depending on the type of application you use.
Wait-- and be ready to respond to office actions
Patience is a virtue-- especially when it comes to trademark registrations. Many trademark owners are surprised by the fact that it often takes more than a year to register a trademark with the USPTO.
It's especially helpful to have a lawyer here to communicate with the USPTO and to help you respond to office actions (which are sometimes initial refusals to register your mark or requests for clarifications or modifications). A good trademark lawyer will also be able to help you with trademark renewals (should your mark receive registration) and any other formalities down the road.