In Business Formation, Business Law, Corporations, Intellectual Property, LLC, Startups

Registering a trademark is an important consideration as a business sets out and begins to grow. The last thing a business owner wants is to spend two years establishing goodwill before receiving a cease and desist letter from another company stating that they are infringing on another’s trademark. To avoid this, I recommend businesses research the name and mark they are using for their brand to ensure that their brand is not infringing on an existing business. Next, I encourage businesses to follow through and trademark their mark with the United States Patent and Trademark Office.

A trademark is a sign, design, or expression that identifies products or services from a particular source. A registered trademark symbol is ®.

The first caution in registering a trademark on your own is to be wary of websites and notifications that look like the United States Patent and Trademark Office, or USPTO. All actions should originate from their website,

  1. You also need to determine whether you need a trademark, patent, or copyright. Trademarks are used for identifying the source of a product or service. If you are like many companies, you may have a slogan, a company name, and a logo. The cost of applying for all three can run close to $1,000 just for the filing fees alone. Instead, I typically recommend that clients first obtain a text trademark on the company name. They can later follow up with more protection once they know they have a viable business that needs additional protection.
  2. Once you have determined that a trademark is proper, you need to determine which type of trademark you are applying for: standard mark, design mark, or sound mark.
  3. Next, you need to search whether your mark is already registered with the USPTO. This can be done on their website or through various services. I recommend spending some time on Google and Bing to determine whether there are unregistered but existing companies using your name or slogan that may prevent your registration. Even if a company has not registered a trademark, they still have rights associated with their use of the name or slogan. There are a lot of considerations when a business is currently using the mark you desire, so I recommend that you contact an attorney to ensure that your desired mark is available for use and registration. Once you determine that your mark is not already registered and is not in use by another company, you will need to get a JPEG image of your mark to upload during the application process.
  4. Next, you will need to determine your basis for filing. This information is needed in the application. You will either file for “use in commerce” or “intent to use.” Either way, you will need to show how the mark will be used in commerce.
  5. Lastly, you will file an application. If you use the online system to file it, you will save $50. The review process takes approximately 3 to 6 months, and oftentimes, the USPTO requires a Response Action with additional information to obtain the trademark. This can often be avoided by putting in adequate work in the initial application. Other times, the mark is simply to close to other marks where a Response Action is difficult to avoid.

Trademark registration is a great way to ensure that you are building a brand that you can protect for years into the future. I encourage all businesses that are building good will with their brand to consider taking the steps to register their marks.


About the Author

Wesley Henderson is a business attorney with Henderson & Henderson. His law firm in Charleston, SC focuses on helping businesses navigate their legal environment, including register trademarks as part of an asset protection strategy. He can be contacted via email or by phone at 843-212-3188.

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