Determine if what you have is a “trademark” or “service mark”

• A “trademark” is any symbol, word, phrase, design, image, sound, color or even fragrance that is used to indicate the source of goods and to distinguish the goods sold or made by one person/entity from another. A “service mark” is like a trademark, except that service marks are used to identify the source of services, rather than goods.
• Please visit our Trademarks Basics Blog for further details 

Consider the distinctiveness of your trademark/service mark

• Marks that are “inherently distinctive” might be registrable on the Principal Register. However, marks that are “descriptive” often cannot be registered unless they acquire distinctiveness (or “secondary meaning”) and are registered on the Supplemental Register. Marks that are deceptively misdescriptive, obscene, disparaging, functional or generic cannot acquire distinctiveness.
• Please visit our Trademarks Basics Blog for further details

Perform a Trademark Search (CONSULT WITH AN ATTORNEY)

• Check trademark databases for similar trademarks in the countries in which you intend to do business with your mark; e.g. the United States Patent and Trademark Office (USPTO) uses TESS (Trademark Electronic Search System).
• Please visit our Trademarks Basics Blog for further details

Check Domain Names

• If you desire a website in association with your trademark, make sure a proper domain name is available for your trademark. Go through Internet Corporation for Assigned Names and Numbers (ICANN). You cannot perform this task on TESS.
• If someone already owns the domain name associated with your mark, you’ll want to verify whether they’ve already registered it. If they haven’t, you can search the WHOIS database to find contact information and offer to purchase the domain.

Prepare a trademark application on the USPTO (CONSULT WITH AN ATTORNEY)

• Log into the USPTO: http://www.uspto.gov/trademarks/index.jsp
• Select the Trademark Electronic Application System (TEAS)
• Determine if you are using an “Actual Use” or “Intent to Use” Basis
  • Actual Use – marks that have already been used, sold and/or distributed in commerce
  • Intent to Use – marks that have yet to be used, sold and/or distributed in commerce, but the owner has a bona fide intent to use such marks in commerce
• Determine what goods and/or services you offer/intend to offer
  • Determine the Nice classification and descriptions are proper for your mark.
  • For a list of acceptable descriptions, visit the U.S. Acceptable Identification of Goods and Services Manual (ID Manual) at http://tess2.uspto.gov/netahtml/tidm.html.
• File under either the Principal Register or Supplemental Register
  • The Principal Register is reserved for inherently distinctive marks or marks that have acquired distinctiveness. The Supplemental Register is reserved for non-distinctive marks that are capable of acquiring distinctiveness but have yet to do so.
  • Please visit our Trademarks Basics Blog for further details

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