How Do You Trademark Your Business or Brand Name?

Ever wondered how you get started trademarking your business or brand name?

The first step in the process to trademark your business name or brand name is an in-depth search. This is where an attorney would step in. We would do a deep search to make sure no one else is using your name, a similar name or some other type of name or logo that can be confusing to an audience. Now, I get this question a lot. People say, I search the TESS and I don't see anything that looks like my mark, I just want to file. 

Okay, pause.

TESS is the USPTO database, The United States Patent and Trademark Office. They are the overseers of the trademark process. Just because you search their database doesn't mean there is not a conflict. It’s not word for word. It's similar words. It's words that sound the same but are spelled differently. It's words that look alike. It's logos that look similar. It is much deeper than just word for word. Just the search of TESS is not sufficient and—sorry—neither is your Google search! You need to go deeper. A deeper search is going to look at business filings. It's going to see what has been registered. It's going to look and see if there has been legal action off a similar mark—you definitely don't want to do this one! It's going to give you an idea of risk and how to proceed. 

Now, after that is out of the way, you've seen your search results, and you have an opinion from a professional, that's when you go to step two.

Step two is the actual filing with the USPTO. Now, the filing with the USPTO is very nuanced. It's not like filling out a job application or even your mortgage application. It is much more nuanced. Here's why: What you put on that application has legal significance. While you might think that you are just being short and sweet, to the point, and using plain language, that could go back and bite you later. I'm sorry to say that but it happens all the time. It's really important that everything is filled out properly and that you don't include too much information or too little information. Either one of those can trigger problems down the road. 

Now, once that application is filed with USPTO, in about three-ish months, it's going to be assigned to an examining attorney. This is an attorney that works for the federal government that is going to analyze your application. They're likely going to ask for more information, clarification, additional proof, or whatever they need. This request comes in the form of an office action. You'll be notified that there is an office action on your mark. While these are very common, you have to pay a lot of attention to them. Do not let deadlines get by you because these deadlines are statutory, meaning that there’s really no wiggle room. You can't negotiate or change them. Also, the way you respond to these office actions could trigger more office actions, or worse, a refusal of registration. Be very, very careful of the way you respond to these.

I have clients who have tried to self-file and they try to handle office actions on their own. They pick up the phone and they say, oh, there's a human on the other side I can just talk to and we'll be able to work this out. When they call and they speak to that attorney, they think they worked it out and then, they get a refusal issued. The reason this happens, more likely than not, is because that examining attorney has certain boxes that have to be checked. Remember, they work for the federal government, they have a code they have to go by. There’s certain language they are looking for. While, to you, that language may be clear and simple, if it doesn't check their boxes, they have a procedure they have to follow. So, no you can't sweet talk them, you can't try to wiggle your way in. It just doesn't work that way with trademarks. It's really important that you understand that there is a code and a law underneath and they are a lawyer analyzing that law in your application.

Now, if you'd like help with the process to trademark your business or brand name, we’d love to hear from you! Just reach out to hello@cenglishlaw.com or schedule a quick consultation!