How to Protect Your Brand Without a Trademark Lawyer

The Trademark Basics

A trademark identifies a specific business’s goods or services. It can be composed of:

• Words

• Phrases

• Symbols

• Design

For legal protection, the mark must be “inherently distinctive.” 

Inherently Distinctive Trademarks

An inherently distinctive trademark is strong and falls into one or more of the following categories:

• Fanciful—invented words that have no meaning separate from their use as part of specific goods or as branding for specific services, such as Pepsi.

• Arbitrary—real words that bear no relationship to the goods or services, such as Apple.

• Suggestive—words that suggest what the goods or services are without directly describing them, such as Coppertone.

A weak trademark, on the other hand, will be generic, descriptive, or both. 

Search for Similar Trademarks

Apart from the most well-known companies, you may not have had reason to learn whether someone has registered a similar trademark in connection with similar goods or services. Lest you become an unintentional trademark infringer, complete a search of the USPTO’s trademark database. If you are working on a diy trademark, comparing your trademark to others already registered is crucial and can help you avoid unnecessary expenses.

Establish Your Trademark 

By using your trademark as part of something you sell or as branding, you become a trademark owner. This is known as “common law trademark protection,” and affords you some level of protection against others using that trademark to sell similar goods or promote services in your area of commerce. Others may still use similar trademarks for similar goods or services outside your area. They can also use similar trademarks for different goods or services within your geographic area.

Register Your Trademark with the USPTO

To increase your protections, you can register your trademark with the USPTO and expand your reach nationwide. That expansion means others cannot use a similar trademark for similar goods or as branding in any U.S. state. You establish that you have the right to use the trademark by showing that it is unique and not too similar to other, already registered trademarks.

Understand How a Lawyer Would Help

The U.S. Patent and Trademark Office (USPTO) recommends that individuals filing for trademark protection seek the assistance of a lawyer. Before you go without, understand that an attorney can: 

• Advise you on how trademark laws apply to you.

• Complete a search to identify similar trademarks.

• Assist in preparing your application.

• Respond to correspondence from the USPTO.

• Help you enforce your rights against infringement.

• Defend you against accusations of infringement.

• Represent you in matters before the Trademark Trial and Appeal Board.

Understanding what intellectual property attorneys do can help you determine if (or when) you need one.

How to File a Trademark Application

Understanding how to file a trademark application begins with learning a little trademark vocabulary. Below are a few words and phrases you are likely to see in the trademark application process.

Filing Basis

Your filing basis is the U.S. Code section under which your trademark falls. First, select 1(a) if you use the mark on goods or as branding already. If you are starting a business that will use the mark but are not yet in business, select 1(b). If you have a trademark already registered in another country and want to register it in the U.S., select 44(e). If you have applied for a trademark in another country but have not yet received approval to use the trademark there, select 44(d).

Registration Basis

Your registration basis is the legal reason that gives you the right to register your trademark. The first option is 1(a) “use in commerce.” Select this if you intend to or already use the mark in your business’s goods or branding.  The second is 44(e) “foreign registration.” Select this if your trademark is registered or in the process of registration in another country. 

Class of Goods or Services

The USPTO offers a “Trademark ID Manual” that separates goods and services into classes and provides USPTO-approved descriptions for each class. Locate the description that best fits your trademark's specific goods or services.

Potential Fees

If you are hoping for a cheap trademark, ensure you can determine what you can expect to pay for the application in advance. You pay a basic application fee based on the number of classes in which you use your trademark. The USPTO has the right to impose extra fees for errors or mistakes in the application.

Complete Your Trademark Application

To complete your application, fill out the online trademark application on the USPTO’s website and submit it. Monitor your application by regularly checking back. The USPTO may respond to your application by:

• Telling you that you have made errors and potentially imposing error correction fees

• Telling you that the proposed mark qualifies for federal trademark protection

• Telling you your mark is too similar to another, descriptive, or generic

Review every step of the application process carefully to avoid errors and fees.

Establishing Your Trademark

You can establish your trademark just by using it—a cheap trademark process, but one that may come with extra costs in the long run. Those can add up quickly, so ensure you have proper brand and trademark protection. Bizee offers resources that can help.

Resources

USPTO, Basis, link.

USPTO, Do I need an attorney?, link.

USPTO, Goods and services, link.

USPTO, Nice Agreement current edition version - general remarks, class headings and explanatory notes, link.

USPTO, Strong trademarks, link.

USPTO, Trademark examples, link.

USPTO, Trademark fee information, link.

USPTO, What is a trademark?, link.

USPTO, Why register your trademark?, link.