Trademark Basics: How to Submit a Trademark

What is a trademark? 

A trademark is a phrase or symbol that functions as a brand image or indicator. It includes words, names, images and symbols that identify a company or brand and distinguish it from other companies or brands. 

The concept dates back to ancient times when skilled artisans working with metal or ceramic would imprint their distinct maker’s mark on a finished product. Even today, you can often distinguish between a high-quality piece of jewelry and a knockoff by the maker’s mark. 

Registering your intellectual property with the government gives you a registered trademark, allowing legal enforcement for both physical products and digital assets.

What is trademark strength?

A trademark has an associated “strength” that shows how defensible it is as your unique mark vs. how widely other entities can use it. 

Consider the Apple logo — an apple with a bite taken out of it. It’s a strong trademark because other entities can’t use that specific symbol or even somewhat similar symbols defensibly. In fact, Apple has been involved in many trademark lawsuits preventing other companies from using logos that are simple graphic designs of a single fruit (such as the pear-shaped logo for a meal prep app called Prepear), arguing that they will confuse customers.

On the other hand, Apple trying to trademark the word “apple” would be weak; a bakery using apples does not violate Apple’s registered trademark if it describes its pies as apple pies. Nor is Big Apple Bagels in violation for using New York City’s nickname.

What makes a strong trademark?

A strong trademark is entirely original. The brand name Xerox is an example. No entity was called Xerox before the company created the name and used it in its branding. 

Strong trademarks are either completely unique words or images, or ones that have a unique use. Going back to the Apple example, the word “apple” is far from unique. However, its use for a technology company is unique, making it a strong trademark. If another company wanted to use the name Apple Technology, it would be sued for trademark infringement.

How can you protect your trademark?

Register and defend your trademark to protect it. 

• Register your trademark. A registered trademark lets you make your mark public knowledge and gives you precedence against future similar marks being registered.
• Defend your trademark. You must defend your trademark if you want to preserve it. If you allow other brands to use something too close to your trademark for too long, your trademark becomes diluted and no longer as easily defensible. Too-broad usage of a too-broad trademark means you lose the ability to claim the trademark. If you see another company using your trademark, start the legal process by sending them a cease-and-desist letter. If they refuse, you may need to hire an intellectual property attorney.

How is a copyright different from a trademark?

While trademarks are words, names, images and symbols that identify your brand, copyrights protect unique creations. Unlike trademarks, you can’t copyright specific words (barring unique brand names like Xerox). 

When choosing whether a copyright or trademark provides the best protection for your business, keep the following considerations in mind.

• Copyright protects complex creations. Copyright doesn’t protect words, typefaces, logos or simple designs. Instead, it protects more complex creations, like entire blog posts, graphic designs and other images. 
• Copyright protection is automatic. Copyright is automatic after you create and publish a protectable work. When you publish a blog post, the copyright for that post is yours. When you create an image for your blog post, you own the copyright over that image. A trademark, on the other hand, requires registration.
• Consider applying for a copyright online, regardless. While copyright registration isn’t required, experts strongly advise applying for a copyright online because unregistered copyrights are not legally protected. Registering for a copyright creates a record of your copyright with the U.S. Copyright Office. 
• Understanding fair use is crucial. Copyright protects your image or writing against use you don’t approve of, but not against fair-use alteration. What constitutes fair use is a broadly debated and legally fraught concept. Generally, people can’t just take your image and use it themselves, but they can edit the image for the purposes of satire. Simple edits like a change in hue don’t count. This is why you can’t just run a Google image search for images to use in blog posts — you must find those allowable for use under an appropriate license, like Creative Commons.

How do you submit a trademark?

If you pursue a registered trademark for your assets, take the following actions after you obtain a trademark application through the federal Trademark Electronic Application System (TEAS).

1. Add contact information for the mark’s owner.

The owner may be the legal entity under which your business operates, or it may be an individual. The contact information should include the following:

• Mailing address
• Email address
• Fax number

2. Determine your mark format.

When you submit your trademark, you must indicate one of these three mark formats:

• Standard character for words, letters, numbers and combinations of these characters in any font or format
• Special character for words, letters, numbers and combinations of these characters in particular fonts, formats or colors, or for images and other visual design elements
• Sound mark for audio trademarks (a prominent example is the MGM lion’s roar)

3. Complete the picture and specimen section.

The first two steps of the TEAS are quick to complete. Providing a picture and specimen may take longer.

• Picture: For the picture section, submit a drawing, whether hand-drawn or computer-generated, if you are registering a special character mark. Your file must be a JPEG attached to the TEAS application.
• Specimen: For the specimen section, you’ll take one of these actions.
  • Submit an electronic audio or video file for a sound mark in WAV, MP3, MPG, WMV, WMA or AVI format. Audio files have a maximum size of 5MB, and video files have a maximum size of 30MB.
  • Submit a graphic showing the planned use for your trademark if it is a standard or special character mark. This graphic could display your mark on merchandise or marketing materials.

4. Indicate your mark’s goods and services.

In this section of the TEAS, detail the goods and services for which you’ll use your mark. Follow the U.S. Acceptable Identification of Goods and Services Manual as a guide, and use any relevant wording you see in the descriptions there. If necessary, you can detail your goods and services in your own words.

After you submit your TEAS form, you can’t change your trademark’s goods and services.

5. Indicate your trademark’s filing basis.

Choose one of the four bases below.

1. Use in Commerce: This category describes marks used in goods or services that you already offer.
2. Intent to Use: This category is for marks you intend to use within the next four years. You must start using the trademark and provide proof of specimens before registering it.
3. Foreign Application Exists for the Same Goods or Services: If you have applied to file a trademark domestically within the last six months, use this basis to indicate a foreign application for that same trademark.
4. Foreign Registration Exists for the Same Goods or Services: If your trademark already exists internationally, you must use this basis and provide information for the U.S. application, such as a copy of the trademark’s foreign registration certificate.

6. Submit your application.

After you pay your filing fee, which can be as much as $400 per good or service class, the USPTO will refer your application to an attorney, who will review it within three months. You will be contacted if you must remedy any mistakes before your application reaches the USPTO’s weekly publication, the Trademark Official Gazette, where other trademark holders can counter your application if it appears similar to their marks. 

If you successfully counter any challenges (or face no challenges), your trademark will be approved after the months to years it can take to adequately address a trademark lawyer’s concerns.

What are some common trademark FAQs?

Here are answers to some of the most frequently asked trademark questions. 

What can you trademark?

There are many guidelines for what constitutes a trademark, and the United States Patent and Trademark Office (USPTO) provides a series of educational videos to help you navigate trademark law.

Can you trademark a website graphic?

In general, you can’t trademark your website’s graphic design, even if it’s unique. You also likely won’t be able to trademark website graphics and illustrations. If you create illustrated characters for use in your branding, you can copyright those characters, but you can’t trademark them.

Can you trademark a logo?

You can trademark your brand logo and, if it’s sufficiently unique, your brand name. If you have individual products with their own logos, you can trademark those logos and names as well. Otherwise, you’re looking at copyright, not trademarks, to defend your creations.

How can you let others know about your trademark? 

There are two kinds of trademark indications: the small ™ and the ® mark (the letter R enclosed in a circle). You can only use the ® after your trademark is successfully registered with the USPTO. You can use the ™ symbol to indicate that your name or image is either an unregistered trademark or that your trademark is currently pending. 

How long does it take to get a registered trademark? 

Once you submit the application, it takes about three to six months to hear back from the USPTO. Then there is a period of due diligence, during which the USPTO ensures that your item is eligible for a trademark. Altogether, the process usually takes between eight months to a year.

Jennifer Dublino contributed to this article.