As small business continues its march onto the internet, more and more companies are looking to protect their intellectual property by filing trademarks with the United States Patent and Trademark Office. A trademark gives you the exclusive right to use your mark or logo in connection with your class of business. Basically, it prevents your competitors or imitators from using your mark without your permission.
Great, so how does one procure a trademark?
First, a trademark search must occur. You need to check things out and make sure that no one else is already using your mark. (A quick note here about trademark classes: Say your mark is the word “SHAZZBOT” and you are in the business of growing organic green beans. When you go to search for others who have trademarked SHAZZBOT, you need not be worried about a web development company that owns the trademark on SHAZZBOT. There is very minimal likelihood of confusion between selling green beans and developing websites.) Trademark searches can be completed solely on TESS, the USPTO web system. However, it isn’t a bad idea to do some googling to make sure there aren’t any non-registered, yet earlier-in-time uses of the mark.
Search come back clear? Great.
Next, you need to choose a filing basis. The tricky thing about filing trademarks is that they must be in some way connected to “commerce.” Unless a mark can somehow be tied to some sort of business venture (including non-profits), it will be denied. This keeps “fake” or non-existent businesses from registering and hoarding marks.
For marks that are already “in commerce,” the filing basis is generally 1(a). (Reference to the USPTO code that governs this whole procedure.)
Thankfully, the USPTO provides some help for new companies who may not be in business yet: The Intent To Use, or 1(b) application.
In a 1(b) situation, a filer basically says “Hey USPTO! We are going to be using this mark in commerce within 6 months. Put it on hold for us, and we’ll let you know when we are live.” While this is convenient, it can be deadly to your efforts if you don’t remember to file the Notice of Use as soon as you are public.
After you’ve conducted your search, determined your class(es) and chosen a filing basis, you are all set to file. The easiest way to proceed is to use the USPTO online system, TEAS.
As you can see, there are many steps here, and many ways to make potentially fatal mistakes. Retaining an experienced attorney to do the filing on your behalf, or offering advice as you complete the process is a very prudent measure.