Lesson 11: How to Register Your Trademark

We’re in the final stretch. In this lesson you will learn how to register your own trademark without the assistance of a lawyer—if you so choose. The steps in registering your trademark are

• making an initial determination of classification

• doing a thorough search

• analyzing the report

• selecting the proper application form

• submitting specimens

• paying the fee

• checking the status of the application.

Make an Initial Determination of Classification

The first step in the registration process is to identify how you want to use your mark, such as in relation to your coaching, speaking, or training services, or on your merchandise, books, or handouts. That will help you determine the class in which you will register your mark. Simply think about all the ways you want to use your mark and on what. The USPTO has an online document called the “Acceptable Identification of Goods and Services Manual” that will assist you in making the determination (see Resources section for more information). For example, if you are a speaker and want to use your mark in connection with your speaking, training, and teaching services, you would consider registering your mark under Classification 41. If you want to affix your mark to your program materials, informational brochures, and other paper products, you would consider filing under Classification 16.

Do a Thorough Search

You can do the search yourself and save money, or you can hire a firm that specializes in trademark searches. There are pros and cons to both, and you ultimately need to decide based on your available time and budget. If you do it yourself, make sure you do a thorough search, which includes a federal search of USPTO registrations, state registrations, common law search of those marks that are in use but have never been registered, domain name search, and a business name search (perhaps through Dun & Bradstreet). For a listing of firms that do the search, see the Resources section.

Analyze the Report

Whether you do the search yourself or hire someone, you must thoroughly analyze the information you receive. Make sure your mark is not confusingly similar in any way to an existing mark. Marks are compared for similarity in appearance, meaning, connotation, and sound. For example, a mark might not look or sound like an existing mark, but it might have a similar meaning.

Select the Proper Application Form

The application form you use will depend on whether you are currently using your mark in commerce or simply intend to use it at a later date. If you are presently using your mark, submit the Trademark/Service Mark Application (see Figure 1 for an illustration of the process), required specimens, and fee. If you are not yet using your mark, but have a bona fide (real) intention to do so, submit the Intent to Use Application (see Figure 2) with the required fee. Please note that the USPTO prefers that you apply using their online Trademark Electronic Application System (TEAS), but it is possible to file using paper forms (see appendix of CD for forms in PDF format).