US Trademark Roadmap
DIY for SMALL BUSINESS OWNERS
How do I protect my business name?
How do I get a trademark?
How much is a trademark?
Sound familiar? If you’ve been asking these questions, then you are in the right place. As an intellectual property lawyer, let me confirm your biggest fear in this space… Yes, lawyers can be EXPENSIVE. The cost of hiring an attorney to file your trademark application will be anywhere from $600 to $2,000, yet the cost of filing your own (ONLY IF YOU’VE DONE YOUR RESEARCH…) can be as low as $225.
Luckily, when it comes to trademarks, there’s a whole lot you can do on your own well before hiring an attorney. If you are confused about what a trademark is, let’s take a step back and learn the basics HERE.
If you are not confused about what a trademark is, then let’s jump on in to your trademark roadmap!
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Step 1: Check Availability of Your Business Name
Come up with your business name and check whether it is available.
Be creative and try to avoid generic words or phrases that simply describe your business (like “The Calligraphy Company”). First, these will be easily confused with other businesses in the same industry, and second, if you ever want to trademark your business name, you are unlikely to receive a federal registration with a generic or descriptive phrase. For example, a calligraphy stationery business might be called “Letters & Love” or “The Lovely Letter”.
Search for various phonetic spellings of your business name on USPTO.gov (US only), Google®, and check the domain availability (e.g. on Go Daddy or similar) to verify that no one else is using the same (or similar) mark for the same (or similar) products.
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Step 2: Check Trademark Strength
Ensure that your mark is legally strong before wasting money on a trademark application with the USPTO:
Strong marks are often:
Suggestive (e.g. they somewhat point to the product/service): "Nap On It" (for selling mattresses) USPTO may claim your suggestive mark is descriptive, in which case you will have to respond with counter-argument.
Arbitrary (e.g. they have nothing to do with the product or service): "Blue Sky" (for selling mattresses)
Fanciful (e.g. they are made-up phrases or words): "Tangawu" (for selling mattresses)
Weak marks are often:
Generic (e.g. they are the literal term for the product/service): "Mattress" (for selling mattresses)
Descriptive (e.g. they literally describe the product/service): "Comfortable Mattress Company" (for selling mattresses)
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Step 3: File USPTO Trademark Application
If you plan to file your own mark at the USPTO, the following may help guide you through this process. Your USPTO filing fee is non-refundable, so take the following steps to avoid wasting time & money.
Determine whether your filing is 1a (based on existing use) or 1b (based on intent-to-use).
1a: File under 1a only if you have already started using your mark in commerce, e.g. attached to goods or in marketing materials.
Have the following dates handy for filing: (1) Date first used anywhere, and (2) Date first used in "commerce".
1b: File under 1b only if you have not yet started using your mark in commerce, but have a good faith intention to do so at some point in the near future.
Select the most appropriate class for registration.
Review the 45 International Classes (IC) to determine the class most accurate for your goods/services. If you are split between two, you may want to file for both.
Classes 1 to 34 are for goods, and numbers 35 to 45 are for services.
Write an accurate description of your goods/services.
Start by searching the Trademark ID Manual with a word or phrase that describes your goods or services. For example, Start Up Heart Up creates publications (books, blogs, podcast episodes) in the area of business & intellectual property, so we would search “publication”.
Have your specimen(s) ready in the correct format.
A specimen is a visual example of your trademark being used in connection with the offer of goods or services. For example, a standard specimen for a physical product is a photo of the product with the trademark on its packaging/label.
Examples of acceptable specimens for service-based business can be found HERE.
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Email hello@startupheartup.com if you would like to learn more about hiring an attorney to file a trademark on your behalf.
Kae Gruner, Founder, Start Up Heart Up
Business & patent attorney, deal-maker, and lover of ideas, Kae founded Start Up Heart Up with the goal to empower everyday entrepreneurs to move from confused to confident in starting a new business from scratch. Whether you are diving in full-time on your business idea or are simply starting a side hustle around your craft, Kae’s expertise in intellectual property, business planning & strategy, and business law will help you bring any dream business from bright idea to business launch in no time.
Ready to start your own business? Check out our free business plan template, as well as business planning checklists, and other how-to guides for new entrepreneurs! Click HERE to see our DIY resources.