The whole process will take anywhere from 5 to 15 minutes. For a typical application, be prepared to provide at least the following:
- The actual mark you want to use.
- Be prepared to disclaim any part of the mark that may, on its own, not be registrable. Read more here.
- The full legal name and address of the owner of the mark.
- A copy of the specimen which is an example that shows you are using the mark in commerce. This could be a picture of your product or a website advertising your service.
- The International Class you plan to use, which are listed here and on a drop down menu in our system, and a description of your good and services.
- The date you first used the mark in commerce and the date you first shared the mark anywhere.
Even if you are the first to use a name, you need to be strategic. Think of the name as a sliding scale between not able to trademark it and easily able to trademark it. On the left side of the spectrum (or the not trademarkable side) are generic names. For example, you could not trademark the name “The Screwdriver Company” if you made screwdrivers. Likewise, we could not name this service “Online Trademark Filing Company” and get a trademark registration.
Almost as problematic as generic names are merely descriptive names. Hence, “The Strong Screwdriver Company” is also not likely to pass muster with the USPTO. Descriptive marks are only entitled to trademark protection if they have gained secondary meaning. That is a legal term of art that means they have become so famous that despite the generic nature, the public associates the product with a specific company. Examples include American Airlines or General Motors. If you aren’t that famous, you should not rely upon a secondary meaning to get your generic name through. If you are that famous, you likely have an army of lawyers. Geographic names often run into trouble and are considered descriptive. “Southwest Screwdrivers” is likely to run into a challenge. Of course, Southwest Airlines has become famous enough to have a secondary meaning.
After descriptive and generic names, your chances of being able to register a name starts to improve dramatically. The next on that scale is the suggestive mark. These hint at the quality or another aspect of the company such as “Herculean Screwdriver Company.” It is better than “Strong Screwdriver,” but conveys the same meaning. These you can usually register, but you run the risk that the USPTO says what you thought was suggestive was actually descriptive. Some popular examples include Microsoft which makes software for microcomputers or Citibank for financial services. Brand owners often like these names because it gives the consumer a good idea of what the company does without having to educate them or spending a lot on advertising to get them used to the name for the particular product or service.
Next on the list are arbitrary marks. These are existing words used in a way unrelated to their normal everyday meanings. Hence, Chocolate Screwdrivers may work. The textbook example of the arbitrary mark is Apple Computers - not to be confused with Apple Records.
Finally, fanciful marks are the easiest to get through the USPTO. A fanciful mark is a made up word or a very rarely used word that has nothing to do with describing the products. “Glotz” for a screwdriver company may work. You are likely familiar with Yahoo!, Google, Exxon and Spotify which would all be considered fanciful marks.
The USPTO may reject your name because it is similar to another name already registered. That is why you should run a search before you file because if the USPTO rejects your application, the fees to Trademark Engine and the USPTO are not refundable. In addition to being too similar to another name, the mark may be rejected because it is a surname, it is geographically descriptive of where you are doing business, is disparaging (think of the current challenge to the Washington Redskins football team), it is a foreign term that translates to a generic or descriptive english term, it uses an individual’s name or likeness, or is the title of a single book or movie.