DIY Trademark Application

DIY Trademark Application

September 30, 2021
Walker Weitzel

If you want to protect your product or brand name, here’s a step-by-step guide on how to apply for a trademark yourself.

The Importance of Branding

A brand name is a very important factor to consider when starting your own business. A good brand name will not only help you stand out from the competition, but it will also provide an identity for your company and create a sense of loyalty with customers. For some companies, the branding effort may begin and end with simply choosing a name for the company. For others, branding may be the single most important aspect of marketing efforts.

The need for branding is not exclusive to big companies with huge budgets. Whether you are choosing a website domain name, purchasing advertising or running your own marketing campaign; every business owner has the opportunity (and responsibility) of investing in having and keeping their brand theirs.

The US trademark system is designed to protect your investment by establishing that you in-fact “own” your brand name, and you can prevent others from using it. Registering your trademark with the USPTO allows you to stake a claim to your business name. We have created a complete guide on how to register your trademark yourself, without the need for a lawyer.

Principles of a Good Brand Name

The first step to branding is choosing a name that works to distinguish your business from all the rest. The USPTO actually has categorized the types of brand names that businesses use, and they use those categories as one of the ways that they can determine whether to grant your trademark registration.

The categories of names relate to how distinctive your business name is. Only some of these categories are eligible for trademark registration because only some marks actually serve to distinguish your company or product from others. Below are the categories for trademark classification:

Generic Name

A generic name for goods or services is simply the word that is commonly used to describe the thing you are selling. For example, if your product is bread, and you call your product “Bread”, then your product has a generic name. The name “Bread” would not serve to distinguish your product from others that make bread. Furthermore, you would essentially be claiming a name that is already in the public domain, so you wouldn’t have the ability to claim exclusive use of the word. Businesses rarely choose generic names because they recognize that it doesn’t distinguish the product to consumers. Accordingly, a trademark application for a generic name will be rejected by the trademark office.

Suggestive or Descriptive

A suggestive or descriptive name is similar to a generic term, except it serves to describe a product. For example, your company that sells pillows could market its product with the phrase “a comfortable night’s sleep”. In this case, although you are using the exact name of the product, you are using word that are often used to describe the product. The principle is therefore the same as a generic name, where it would be unfair to competitors to prevent them from merely describing their products. As such, suggestive or descriptive names are also ineligible for trademark registration.

Fanciful, Arbitrary, or Suggestive Marks

Finally, we arrive at the types of marks that can be protected. These types of marks are distinctive to consumers, and they allow people to recognize the source of the products. A suggestive mark is name that is related to a product, but requires a consumer to make some leap to understand what the goods are. For example, “Speedi Bake” as a name is suggestive of a pre-made dough product. An arbitrary mark assigns a word that is not typically associated with a product, such as “Apple” for computers. Lastly, a fanciful mark is a wholly made up word, such as “Expedia”. All of these types of names can be registered and protected with a US trademark.

Trademarks are inherently connected to specific goods or services

A trademark is intended to help consumers distinguish one brand from another. In fact, the main test that is used to determine if a trademark is valid is whether the mark creates “a likelihood of confusion.” From our everyday experience, we understand that O’Reilly Auto Parts is unrelated to O’Reilly’s Irish Pub and Bar. We understand this difference because the goods/services offered by the two are highly disparate. We, as consumers, inherently tie brands to the types of products they supply. Of course, a brand can expand its offerings – Apple has grown to include products such as streaming content and financial services. However, a trademark only springs into existence once a brand actually begins marketing or selling a given product. Thus, Apple may own the Apple trademark for many categories in the tech space, but Red Apple Market can still peacefully coexist because the products sold by the two companies are different.

Every trademark application asks three main questions:

1. What is your mark? It can be anything that can signify the provenance of the goods. It can be the name, a logo, the shape of the packaging, a sound, smell, color, or anything else that serves to inform the consumer of the source of the products.

2. Which specific products are tied to the mark? The trademark system has an extensive list/categorization system that classifies and groups various types of goods.

3. Can you demonstrate that you have actually begun using the mark to market or sell goods? The specific question is whether your mark is being “used in commerce”. Only marks that are “used in commerce” are eligible for registration, and every trademark application requires you submit proof, typically in the form of pictures of the mark as it appears in connection with a saleable product. The proof can be a picture of your product packaging, a product listing on an online retailer, or a sales copy, to list three examples. See our previous blog post on trademark specimens to learn more.

Who Owns a Trademark?

A trademark can be owned by any recognized legal entity, including a person, corporation, or trust. Trademarks can be owned, licensed, and transferred, so if a person applies for a mark, they can later transfer mark ownership to the company. I recommend that my clients apply for a mark in their own name unless there is a specific legal reason to register a mark to their business. A common reason for this might be that a business is jointly owned by more than one person. In this case, the mark should belong to the business rather than to one of the owners.

Registering Your Trademark

Step-by-step guide through automated application system

We apply using the TEAS system. To get started, you must register for a myUSPTO account, and then follow the instructions that are provided in the slideshow below.

You can find the TEAS system here.

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