How to trademark a name

Do you need to register?

No. The USPTO says you become a trademark owner when you start using a mark, but those rights cover only the area where you do business. Registration gives you stronger, nationwide rights, a legal presumption that you own the mark and the right to use the ® symbol.

Forming an LLC doesn't do this. The SBA says an entity name protects you at the state level, while a trademark protects a name at the national level.

Pick a name that can register

The USPTO says strong marks are invented, arbitrary or suggestive. Exxon is an invented word. Apple is arbitrary for computers. Coppertone suggests something about sun care without saying it.

Weak marks describe the product or name it. Creamy for yogurt is descriptive, and those register only in limited cases. Bagel Shop for a bagel shop is generic and can't be federally registered.

Search before you file

An examining attorney checks your application against existing marks, so look first. Search federal records for the same and similar names on related goods or services. The USPTO says marks can conflict without being identical. Check other public uses too.

File the application

New applications go through the USPTO's Trademark Center. You'll give the owner's details, the name, your goods or services and your class. The base fee is $350 per class. Surcharges add $100 per class for missing required information and $200 per class for writing a custom description. A custom description also costs $200 per class for each extra 1,000 characters past the first 1,000.

If you're already selling, you file based on use. If you aren't yet, you can file based on intent to use and prove use later.

The USPTO doesn't require an attorney for US-domiciled applicants, while foreign-domiciled applicants must have a US-licensed one. OpenFile isn't a law firm. Trademarks through us are filed by an attorney.

What happens after you file

An examining attorney reviews the application. If there's a problem you get an office action, and you have three months to respond, with one three-month extension for a fee. If you miss it, the application is abandoned.

If it clears review, the mark is published for 30 days so anyone who objects can oppose it. A use-based application can then register. An intent-to-use application gets a notice of allowance about eight weeks after publication, and you have six months to show use. Extensions can take you to 36 months from that notice. A statement of use costs $150 per class, and each extension $125 per class.

Registration is never guaranteed. An application can be refused or opposed.

Keep it alive

Registration needs upkeep. File a declaration of use between the fifth and sixth years after registration, at $325 per class. File a combined declaration and renewal between the ninth and tenth years and every ten years after, at $650 per class. A six-month grace period costs an extra $100 per class for each filing. If you miss these, the registration is cancelled or expires.