Trademarking a logo with the United States Patent and Trademark Office (USPTO) is a long and complex process.
USPTO is extremely strict on trademark applications that are too similar to an existing trademark. You also need to complete the paperwork perfectly and include relevant documents and specimens to support your claim.
But it doesn’t have to be such a complicated and overwhelming process, especially when you have LegalZoom on your side.
Stick with us as we explain all the important steps in trademarking a logo and what you need to look out for to have your application approved the first time around.
The Easy Parts of Trademarking a Logo
Although trademarking a logo can be complex, there are plenty of benefits to be gained from the process.
A federal trademark registration is a valuable asset to your business. This is particularly true if you plan on selling your business, as it gives you something tangible to sell. If your brand isn’t trademarked, nothing is stopping the buyer from imitating your products.
A trademark also enables you to protect your brand and everything you’ve worked hard for, as you’ll have the protection to take legal action against alleged trademark violations.
If you want to make the whole trademark process a lot smoother, you should enlist the help of LegalZoom.
LegalZoom is an online legal company that can assist you with your legal documents without hiring a lawyer. It offers a ton of services designed to help you start your business, including filing a trademark. Do it yourself with guidance, or let an attorney lead the way. Either way, with LegalZoom behind you, you’ll give your trademark application the very best chance at success.
The Difficult Parts of Trademarking a Logo
Unfortunately, there are more difficult parts of trademarking a logo than easy ones, but that doesn’t mean it’s not worth it.
First, the process takes a long time. You should expect to wait around 6-12 months for your trademark to be approved after submission. This is assuming that you’ve completed the application correctly! It is a rigorous process, and it’s not hard to make errors in your application, resulting in a rejection, which will put you right back at the drawing board.
Secondly, you need to undergo some seriously in-depth research before starting the process to ensure your logo is unique. If it’s too generic or similar to an existing logo, it will be denied.
Finally, once your trademark application has been approved, the work is not over. You have to maintain your trademark rights by using your logo in commerce and submitting certain documents within required intervals to maintain the legal rights to your trademark.
Don’t fret though, with our step-by-step and LegalZoom’s assistance, you’ll be well on your way to submitting a successful trademark application in no time.
Step 1: Trademark Preparation
Once you’ve decided that you’re ready to trademark your logo, there are a few important considerations to make before getting started with the application.
Determine Whether you Need a Federal Trademark
In the U.S., there are three levels of trademark protection. These levels include local trademarks, state trademarks, and federal trademarks.
To put it simply, if you plan to sell products or conduct business exclusively within your local area or home state, you’ll find that trademarking your logo within that area will suffice. In these instances, the cost is far less and the process far simpler. However, it will limit your legal protection to this geographical area, and the extent of protection varies.
If you’re a small business or are limited to operating locally for whatever reason, you can probably get by without a federal trademark, especially in the beginning.
Alternatively, if you want to use your logo nationwide and allow yourself far greater protection, a federal trademark is the way to go. In general, the larger your company and the wider your reach, the more likely you are to need these protections.
Ensure Your Logo is Available
Once you’ve determined that a federal trademark is suited to your business needs, it’s time to get researching.
One of the most important steps at the beginning of this process is to ensure that your logo is available and that it’s not too similar to other businesses existing trademarks. You can do this using USPTO’s trademark database, TESS.
The key things that you’re looking for in this search are whether any registered or applied-for trademark is similar to yours, used on related products or services, or live. If your logo meets all three of these, your trademark will be denied based on the grounds of “likelihood of confusion.”
Ensure Your Logo Meets USPTO Guidelines
While you’re in the process of checking that your trademark is available, it’s also a good idea to make sure that your logo meets all USPTO guidelines.
For example, if your logo doesn’t accurately reflect the services or products you’re providing, USPTO will consider it misleading and refuse your application. Furthermore, it may seem obvious to most, but USPTO will inherently refuse a trademark that is offensive in any way.
Taking the time to do your due diligence is a critical step in trademarking your logo. The minor inconvenience of redesigning or adjusting your logo slightly to meet USPTO’s criteria will be much easier to do at this point than once the logo is already in processing for trademark approval.
Step 2: Enlist the Help of LegalZoom
Having all your ducks in a row before you enlist the help of LegalZoom will help to speed up the process a little. But if you have absolutely no idea where to start or you’re feeling overwhelmed with the process, contact LegalZoom for assistance from the get-go.
Do it Yourself
You’ve done all the research, but enlisting the help of a professional to give your application a once-over would give you the peace of mind you need to have your trademark approved. If this is you, LegalZoom’s Do It Yourself package is the one for you.
You’ll tell LegalZoom about your trademark and walk yourself through the process of your application alone. When you feel it’s complete, you’ll hand the reins over to LegalZoom to complete, double-check, and file your application with USPTO.
The entire process will set you back $249 plus federal filing fees.
Let an Attorney Take the Lead
Alternatively, if the entire process simply stresses you out, or you don’t have the time on your plate to do it all by yourself, let a LegalZoom attorney do it.
With this package, LegalZoom will do the due diligence for you. Your attorney will research your mark and file your application on your behalf. You’ll have peace of mind knowing your trademark is in professional hands.
This way does incur a higher fee of $599 plus federal filing fees.
But if LegalZoom finds any issues with your first trademark choice, you’ll get a search on a second for free. And if your first application is rejected, LegalZoom will cover its $599 fee to register a different trademark.
All in all, whether you choose to do it yourself or have an attorney take the lead, enlisting LegalZoom to oversee your trademark application will give you a greater chance of having your trademark application approved without setbacks.
Step 3: Prepare and Submit Your Application to USPTO
This step assumes that you will enlist the help of LegalZoom to submit your application and take the do-it-yourself path. If you are using an attorney to assist you, you’ll still need to go through the process of handing over your logo and documents, but it’ll look slightly different than this.
Prepare Your Paperwork
Here you’ll need to produce and gather all the documents required by USPTO to support your application. First, you need to identify and categorize the goods or services that your logo symbolizes. The number of goods or services classes included in your application will dictate how much your application will cost.
It’s important to note that using the right words to describe and identify your products is crucial. In the instance that you haven’t appropriately categorized your product, USPTO will deny your application.
You’ll also need to submit a “specimen” for each type of good or service your logo represents, showing how it’s utilized.
For example, if you’re selling a physical product like drink bottles, you’d include pictures of your logo in use on the drink bottle. You could also include examples of the logo in use on the packaging or products on physical display in a store.
If you provide a service, a specimen of materials used to promote your company and its services will do. The key thing here is to show a “direct association” between your logo and the services it represents.
It’s vital that you get your paperwork right. Even the most minor error can see USPTO rejecting your application. Which is all the more reason to work with someone like LegalZoom to ensure you nail it the first time.
Submit to LegalZoom for Filing
Once you’ve completed your paperwork, it’s time to submit it to LegalZoom.
At this point, LegalZoom will tie up any loose ends with your paperwork and proofread all your documents to ensure it fits the criteria. Don’t forget that if you choose the “do it yourself” option, LegalZoom will expect that you’ve done your due diligence and will simply proofread your application to ensure it has a good chance of being approved.
Once the attorney from LegalZoom is satisfied with your application, they will file it with the USPTO, and the waiting begins.
Step 4: Application in Progress
When it comes to trademark applications, the waiting game can be a long one. You should expect the process to take anywhere between 3 and 12 months. During this time, here are some of the things you can do.
Track Your Application
As soon as your trademark application has been submitted, you will receive a confirmation from USPTO with a serial number. You can use this serial number to track your trademark’s progress using the Trademark Status & Document Retrieval platform.
Here are the steps your application will pass through:
- Your application will be reviewed to make sure you’ve met the basic filing requirements.
- The USPTO will hand your application over to an examining attorney. You can expect to wait several months before it reaches their desk.
- The examining attorney will scrutinize your application with a fine-tooth comb. This is where they’ll determine whether your trademark is too similar to an existing logo, whether you’ve categorized your product appropriately, and whether you’ve included suitable specimens.
Each time your application moves through these steps, your application status will be updated for easy tracking.
Correct Any Application Errors
Let’s hope this won’t be the case for your application, especially if you’ve decided to use LegalZoom’s assistance. But with such a challenging process, application errors can arise.
If your application is rejected due to an administrative or regulatory error that you can easily resolve, you’ll be allowed to do so.
But if your logo is found to be too similar to an existing trademark, your application will be denied, and you’ll be forced to start the entire process from scratch. You’ll also have to pay the filing fees again.
Step 5: Maintain the Rights to your Trademark
Hopefully, by this stage, your trademark application has been approved. Now that you hold a registered trademark, here are the considerations when moving forward.
Use Your Trademark
It sounds silly after everything you’ve been through to have your trademark registered. But once your trademark has been granted, you must use it in commerce. This is because only businesses that are actively using their logo are entitled to own the trademark rights to it.
The only situation where this is not the case is if COVID-19 has directly impacted you or your business so that you’re temporarily prevented from using it.
Submit the Required Documents
On top of using your trademark in commerce, you need to submit certain documents at specific intervals to prove that you’re still using your existing trademark. Here are the documents and deadlines you need to keep your registration valid:
- File a Declaration of Use and/or Excusable Nonuse under Section 8 between years five and six after the registration date.
- File the first Declaration of Use and/or Excusable Nonuse and an Application for Renewal under Sections 8 and 9 between years nine and ten after the registration date and then every ten years thereafter.
The USPTO will send reminder emails when you have an upcoming deadline for maintenance, but you should keep on top of it, too. If you don’t file these documents on time, your logo will be considered abandoned, and you’ll lose all legal protections.
Step 6: Enforce Protections Against Violations
This step is not necessary for all businesses. The larger and more well-known the company is, the more likely you’ll need to keep an eye on anyone violating your trademark rights.
In a nutshell, the best way to enforce protections against violations is to hire a legal firm or specialized organization to engage in trademark monitoring. If they come across a logo similar to yours and are likely to confuse, they’ll send cease-and-desist letters to the violator. They’ll also engage in litigation on your behalf to protect your intellectual property if it is necessary.
If you enjoyed working with LegalZoom throughout the trademark application process, why not hire them to engage in a trademark watch for you? It’s a quick, three-step process that will keep your trademark monitored for $175 per year.
Source: quicksprout
How to Trademark a Logo