How to Apply for a Trademark

In this article, we’ll cover what a trademark is, why you might consider getting one for your small business, the difference between state and federal trademarking, how to apply, the forms you’ll need to fill out, the procedures to follow, and what you can expect to pay for trademark registration.

What It Is

According to the U.S. Patent and Trademark Office (USPTO), it is “a word, phrase, symbol or design that identifies your goods and services” and distinguishes your products or brand from others in the market. Trademarks are typically used for goods, while service marks are used for services.

Trademarks can apply to business names, slogans, symbols, logos, sounds, colors, and even scents symbolic of a specific brand. They give you exclusive rights to use your mark and prevents competitors from being able to legally use one the same as or very similar to yours.

Forms of Property That Can Be Trademarked

• Product names and nicknames (for example, both Coca-Cola and Coke are marked)
• Logos
• Sounds (for example, Harley Davidson’s motor sounds and Southwest Airlines’s intercom ding)
• Business names
• Slogans (for example, De Beers’s “A Diamond Is Forever” and Nike’s “Just Do It”)
• Color combinations or schemes (for example, Tiffany Blue and Target Red)
• Smells (for example, Hasbro’s Play-Doh scent)

What Cannot Be Trademarked?

• Any mark that’s already in use or is too similar to a mark already in use
• Generic descriptive words
• Commonly used phrases or messages
• Direct religious quotes and passages

Why You Might Need a Trademark

Many small business owners mistakenly assume that trademarking is only for well-known brands and large corporations that have many assets to protect. But when it comes to protecting your hard work and brand identity, the size of your business doesn’t matter. It is important to protect what belongs to your small business, including its logos, slogans, symbols, packaging, and more.   

If you are considering trademark protection but are unsure if it is necessary, a small business intellectual property attorney may be able to guide you.

If you are starting a new business or want to rebrand your business, experts recommend making your logo and other business branding as unique as possible. 

A unique logo or symbol improves brand recognition, giving you a competitive advantage and providing your business with greater intellectual property protection. The more distinctive it is, the more difficult it will be for competitors to copy. This also prevents competitors from poaching your customers by imitating your brand.

What Does It Protect?

A trademark is always connected to the specific goods or services sold to customers with that mark. Therefore, you can register only a word, phrase, symbol, or design that is specifically identifying the goods or services being used. And it isn’t limited to one good or service. It can be used with many different goods or services or include both goods and services.

 Trademark law:

• Identifies the source of your goods or services
• Provides legal protection for your brand
• Helps guard against counterfeiting and fraud

A common misconception is that trademarking means you legally own a particular word or phrase and can prevent others from using it. But you do not have rights to the word or phrase in general, only to how that word or phrase is used with your specific goods or services.

For example, let’s say you use a logo as a trademark for your coffee shop business to distinguish your goods or services from others who sell coffee. This doesn’t mean you can stop competitors from using a similar logo for non-coffee-related goods or services. You can, however, prevent others from using the same or a similar trademark for related goods or services without your permission.

How It Protects You

Trademarks help distinguish goods and services on a legal level. Additionally, and just as importantly, they make a valuable distinction to consumers. They are used to identify and protect branding elements that identify the source, owner, or developer of a product or service.

Trademarking prohibits any other individual or business from using marks that could likely be confused with an existing one. For instance, an electronics company cannot legally use a symbol that looks like an apple, and it can’t use a name that sounds like that fruit, either.

A registered trademark through the United States Patent and Trademark Office (USPTO) is identified with the ® symbol. But a trademark doesn’t have to be registered for protection rights. Unregistered trademarks can be recognized with the ™ symbol, which indicates that the user is using common law to protect their interests.

Patents, Copyrights, and Trademarks

Intellectual property (IP) refers to protecting creations of the mind and intangible assets. There are four types of intellectual property, including copyrights, trade secrets, patents, and trademarks. The USPTO grants patents and registers trademarks, and the U.S. Copyright Office at the Library of Congress registers copyrights. 

• Patents are the protection of inventions, giving the patent owner the exclusive right to build, sell, or use the invention for a set period of time in an attempt to avoid patent infringement. In the U.S., this period is typically 15 to 20 years. 
• Copyrights and copyright law protect the creative works that are “fixed in any tangible medium of expression.” This includes works of authorship such as books, movies, music, paintings, photographs, websites, video games, and software.
• Trade secrets protect confidential information that can be sold or licensed.

Differences Between State and Federal Law

Trademarks protect intellectual property rights. In the U.S., this is done at both the state level and federal level. These two processes are different, and each requires a different procedure.

Simply using a name, logo, or slogan in your business gives it some level of trademark protection. However, these “common law” trademarks are hard to enforce and apply only in your immediate locality. 

You can get statewide protection by registering it with your state. But the strongest and most far-reaching protection comes from registering your mark with the USPTO.

How to Register in Oregon

If you’re doing business in Oregon and expect to stay here, then you will want an Oregon trademark.

The first step is to register a business name—the official name your company uses to do business—with the Oregon Secretary of State. It’s wise to check the Oregon Active Trademark Database first and type in the name you are hoping to register. A quick search can ensure that no one else has already used your name.

Trademark applications with the Oregon Secretary of State’s Office cost $50, and the submission takes five to seven business days. No attorney is required, and it becomes effective once filed. You can apply here. 

You must renew every five years for a $50 renewal fee. Additionally, changing ownership or canceling it costs another $50.

Correspondent information is changeable for free at any time. However, the description of your trademark is not changeable once filed.

A state trademark doesn’t allow you to use the ® symbol. Instead, you must use ™ or ℠ for service marks.

How to Register for a Federal Trademark

Federal law says the registration of a trademark creates rights throughout the entire United States. If you ever intend to move your business or expand it beyond state lines, this is a good idea. If you have a federal trademark, you don’t need to register a state mark as well.

Before deciding on your business’s name, check the U.S. Patent and Trademark Office’s trademark database to ensure no overlap. Then begin the filing process here.

Filing a federal trademark can take three to four months. An attorney will be assigned to your application, and the cost for submission is a minimum of $275. Your trademark won’t be effective upon filing. Instead, it becomes active retroactively once it is approved.

In your filing, you’ll need to describe your business, the goods or services you provide, and the mark for which you’re claiming ownership. You must renew federal trademarks every 10 years.

Below are additional things to consider before, during, and after the application process.

Your application becomes a public record.

Your application becomes a public record once you submit it. Except for payment information, all personal information you submit with your application, including your mailing and email addresses, become part of a public record viewable on the USPTO website and other websites that index USPTO data, such as Google. 

While this is required by law, you can use limited options to prevent certain personal information from being made public. 

Determine which type to register.

You can apply to register as a standard character trademark or a special form trademark. The type you choose affects your scope of protection and your submission requirements.

A standard character mark requires very little information, while a color special form mark requires you to provide a JPEG version of the mark, a color claim, and a description of where in the mark the colors are located.

Classify your goods or services.

You can use the Trademark ID Manual to identify and classify the goods or services you provide. Note that the number of classes of goods or services included in your application will affect how much your application costs. After you file your initial application, you cannot add to your goods or services; instead you can only remove them.

Know your filing basis.

In your application, you must specify which filing basis you’re using and meet its requirements. You can learn more about the different types of filing basis options here.

Choose your application form.

You can use the Trademark Electronic Application System (TEAS) to complete the initial application and file electronically. The first application has two filing options: TEAS Plus and TEAS Standard. The costs differ between the two, as each one has a different number of up-front requirements.

Check the status of your application.

The Trademark Status and Document Retrieval (TSDR) system allows you to check on the status of your application or registration file using the serial or registration number. You can use TSDR to view, print, and download documents in your file at any time.

Protect Your Business Today

Receiving a federal trademark legitimizes your business on a national level. If you don’t intend to expand outside of Oregon, however, a state one may make the most sense for your small business. Trademarking on the state or federal level protects your intellectual property, so make sure to get your business logo, slogan, or other symbol trademark protected.

Finally, if you need more assistance, our knowledgeable business advisers are here to help. Click here to locate an Oregon SBDC near you and request free one-on-one business advising.