There are many business owners who own registered trademarks but have no idea about it. How come?
Possible scenarios:
You’ve registered a trademark when you started up, and you never looked back.
You thought having your business/brand name registered was a good idea one day, then you managed to get it registered. And now it feels like an ancient history.
You hired someone for your trademark registration, and you don’t know where to find them now.
Well, here comes what to do when that happens.
First, see if you have “U.S. Serial No.” or “Registration No.” in your hands.
If you have any of the following, you can find the number easily:
Registration Certificate (for your trademark)
USPTO Official Receipt (for your trademark application)
An email from the USPTO regarding your application or registration
If you don’t have any of those, you need to go to TESS and look up your trademark. See generally TESS Search Hacks.
Second, you go to TSDR and access the current status of your application/registration.
Just type the number you have in the box, and hit Status.
If it reads “Registered” on your status as highlighted below, you have a registered trademark.
If you don’t have a registered trademark, it’s obvious that you need to do something about it.
However, even if you have a registered mark that’s issued and active, you might still need to something.
Lastly, click Maintenance tab on the top.
Then, you’ll see something like this.
It will tell you if your maintenance is due. In other words, if you don’t act in time, your trademark registration will be canceled.
Well, losing registration doesn’t mean you lose your trademark altogether. In some cases, you can even revive your registration. However, there will be at least a suspension of your statutory rights under the registration, so you do not want that to happen.
If you didn’t do your application yourself, you may need help with maintenance as well, but not always.
Maintenance chiefly comes in two varieties: (1) making sure the registrant is still using the mark and (2) impose reasonable fees for keeping the trademark Registers. The latter is, as you probably guessed, about paying the bill while the former requires some documentation to prove your use.
Let’s talk about the former variety. This type of maintenance filing is often rejected for submitting a wrong specimen. So, you probably should check out Specimens | USPTO before filing.
Other than that, I believe the maintenance filing is pretty straightforward as long as you read and follow instruction carefully. Just make sure you find a correct form on the Index of all TEAS forms | USPTO.
Updated on 2/6/2024 for the all-new Trademark Search by USPTO.
Trademark attorneys, like myself, use USPTO’s Trademark Search like everyone else. I will walk you through the entire process with helpful tips you can use right away.
Now, hit the “Search by all” button on the top left, and choose “Wordmark”.
If you know what company name (or brand) you’re looking for, you can simply type it here.
Alternatively, it should give you a good start if you’re concerned about others using more or less same name or design as your brand.
For example, if you search “apple”, it will show you all trademarks in the USPTO’s database that contain the word “apple” as well as any design related to the fruit “apple.”
The above are just the first 16 trademarks out of 4,694 results that I got today.
Narrow it down using description of goods or services
Let’s start by saying a trademark can’t stand alone without association with a good or service. When you see a sign saying “Apple” in a grocery store, would you assume that the fruit is produced by Apple, Inc.?
No. That’s why you should be interested only in the trademarks used in association with the goods/services related to your business.
You can narrow your search result by typing your own description of a good or service. Just locate a new box, pre-filled with the title “Refine search by goods or services”, next to the search box you just used.
You can, for example, search “socks” if you’re in the socks business, but that’s when you are interested in pretty ordinary items like socks.
Alternatively, use the International Classes
Trademark examiners are more likely to use International Classes (or ICs) than descriptions like “socks”.
A brief introduction to the ICs. Countries around the world decided to categorize trademarks into 45 international groups or classes. International Class 1 is for chemicals; 3 is for cosmetics and cleaning preparations; and so on. There are only 45 ICs. Because it’s easy to presume that goods or services in the same category are closely related, when a trademark has a similar mark registered in the same IC, it’s an automatic red flag for trademark examiners.
Also, you should consider related ICs. For example, meats and processed foods (IC 29) are often sold at the same place as staple foods (IC 30) and natural agricultural products (IC 31). This is covered by “coordinated” feature of the Trademark Search. More about this further down.
First, it’s a good idea to skim through the list of ICs.
Incorporating ICs into your search is so easy although it’s called “Expert”. You only need to click the button “Expert” next to the search boxes.
Now you can see the list of ICs on the left column. You only need to click on the ICs you’re interested in.
You probably already found this, but there’s a “Coordinated” toggle above the list of ICs. When you select an IC, some ICs will be automatically selected in a lighter color, if the toggle is on. These are ICs that the USPTO deems related to the IC you selected.
You can play with other toggles such as “Live” and “Dead” in the “Status filter” above to further narrow down the search.
Advanced search
Unfortunately, people don’t always use correct spellings for brand names. Sometimes, the number “0” may replace “o” in a trademark, making your search incomplete.
Trademark Search offers you an option to use Regular Expression (Regex) instead of simply typing “Apple”, but this calls for the use of “FIELD”.
I put FIELD in all-caps because “fields” should always be capitalized in Trademark Search. So are Boolean operators like AND and OR.
Start with a CM FIELD.
Combined Mark FIELD lets you search not just the words but also alternative spellings and translations.
First, we want to find out the most distinctive and recognizable part (or parts) of your trademark. We will be calling the part(s) keyword(s).
If your mark is “T-mobile” for telecommunication services, I would say the keyword is the letter “T”. If your mark is “NinjaBlender” for blenders, “Ninja” would be your keyword. If it’s “Saks 5th” for a retail store, it’s “Sak” and “5th”.
For made-up words like Noorola, just pick a part that looks familiar, like “rola”.
You should type in (or copy and past and change KEYWORD to your own keyword):
CM:/.*KEYWORD.*/
in the search box after changing the blue box to “Search by filed tag” as shown above.
e.g.
If you have more than one Keyword, you can connect them (KEYWORD_1 and KEYWORD_2) with “AND” to find only marks that have both.
CM:/.*KEYWORD_1.*/ AND CM:/.*KEYWORD_2.*/
e.g.
This search pulls up all the trademarks that had been registered and applied as well as currently registered trademarks as long as they include your Keywords. Because we added the regex “.*”, if your keyword is home, the result will include Homedics. However, your search won’t include “fifth”, more about this later on.
A good thing is that because we used the field “CM”, you will not miss a foreign equivalent of your keyword. e.g. Primera Banco for an equivalent of First Bank.
Other fields to use.
I personally try to go through at least hundreds of marks that are most similar. However, on many occasions, the Keyword search populates thousands or more.
There are many ways to narrow down your search. For example, you can simply see only “live” entries, meaning applications pending examination and active registrations, by adding “AND LD:true” at the end.
CM:/.*KEYWORD.*/ AND LD:true
This sometimes helps, but dead applications and cancelled registrations can give you a fuller picture, so it’s not always a good way to perform your clearance search.
In a similar way, if you want to see only “registered” marks that are live, you can use “SA:registered”.
CM:/.*KEYWORD.*/ AND LD:true AND SA:registered
This gives you only registered marks that are still active. If you want to search for every mark that has been registered, including currently cancelled, you can drop the middle part.
CM:/.*KEYWORD.*/ AND SA:registered
Incorporate ICs.
Incorporating ICs into your search shouldn’t be hard. Just remember you should always put them in a three-digit format such as 001, 012, and so on.
IC:THREE_DIGIT
For example, you can search IC:001 to see all trademark applications and registrations for chemicals.
Because we wanted to narrow our search, we should add it to the previous search with a preceding “AND”.
Note, “OR” is used here because you are interested in both of ICs separately, not just trademarks that are registered for both ICs.
It’s important to note that if you want to use “OR” in tandem with other fields connected with “AND”, you should use parenthesis to get a correct search result.
I want to remind you that you can always use the “Expert” mode, left column to choose ICs, with coordinated toggle on/off, but the above should illustrate how to perform a nested search with parentheses.
Now, you have it.
Before I let you go. A word of caution. The narrower your search gets, the more you will miss.
Also, in practice, my search gets a little crazy with keywords. For example, I may use
CM:/h[ou]n[aeiou].*/
instead of
CM:/.*honey.*/
because I want to include marks like “huneyboo” in my result. FYI, the first regex will return more than double the total search results than the second regex. If you’re concerned about the alternative spellings but don’t know a thing about regex, you stick with the Wordmark search above illustrated.
If you’re not familiar with regex but want to learn more, just look up tutorials for regular expression, which is more widely used than you think and certainly not an invention by the USPTO.
If you are wondering if the invoice or bill you received by mail is legit, please read on.
Scammers consistently target US trademark applicants and registrants. Many of those have names bearing a close resemblance to the name of the United States Patent and Trademark Office (USPTO) such as Patent and Trademark Office, LLC.
First off, if you have hired a U.S. attorney to work on your trademark application, you can safely ignore all but your attorney. The USPTO do not contact trademark owners directly when it has other contacts such as an attorney of record.
Second, the renewal of trademark registration requires paperwork. You simply cannot extend the life of a trademark registration by just footing a bill. Hence, the USPTO never sends you a bill; instead, it accepts filing fees along with required paperwork.
Lastly, this goes without saying. But when you are in doubt, do not pay!
Well, I get that question a lot as an IP attorney. I have been working on trademark cases for about ten years now. In fact, one of the first things I did as a newly minted attorney in Chicago was to file a response to an office action rejecting a trademark application by YS bee farms.
Ever since, I’ve been working with small and large businesses to get their trademarks registered or help them enforce or defend their trademark rights in courts. These clients are more or less established businesses.
Then, Amazon Brand Registry happened, and everyone wants a registered trademark now. Literally, everyone. I get an email from an individual who wants to aspire to become a successful Amazon seller every now and then. Unfortunately, these online retail newbies often ask the wrong questions:
How much does it cost to get a registered trademark?
Well, it depends, if you want just something with ®, it would only cost you $250, seriously. If you want something of value, it can go way up.
Are there any requirements to get a registered trademark?
Well, ironically, the answer is a trademark. You’re registering a trademark you already have! (With an exception of ITU, of course.)
The question you should ask
A business experienced in retail always come with brand/name candidates instead of a product label already printed out. They ask me questions like:
“Can we use any of them?”
“What do you think is the best?”
“Are there any conflicting marks out there?
And the ultimate question: “is this a good one?”
These are all really good questions. Also, I hear them so often. When it comes to a certain mark there are always specifics that do not apply to other cases. However, there are repeating themes that are sort of universal. I want to discuss some of the universal tips.
Use TESS
Your brand name should be remembered. To achieve that, often you resort to tapping into your own memory and experience. Then, you come up with something familiar.
Now, familiarity is the enemy of a distinctive mark. You don’t want to pick something that has been used by another for many years. In fact, if there is likelihood of confusion between the old mark and your mark, you will be legally barred from using or registering the name.
TESS is an acronym of Trademark Electronic Search System. It’s a free and powerful tool. You can simply type up your candidate to see if there’s any identical trademarks that are registered, applied-for registration, or cancelled of registration.
I mentioned likelihood of confusion, which means you should also avoid similar marks. To find similar marks, you can do advanced searches on TESS as well. Advanced search needs some knowledge and practice. But, there are some easy things you can start right away.
Use $ signs to expand your search.
Let’s say your brand name candidate is “Aweriginal”. You can try “Awe$” or “$riginal”, which will return anything starting with awe- and ending with -riginal, respectively.
The dollar sign works fine in the non-advanced search option, “Basic Word Mark Search (New User)”.
Narrow it down to your market.
Well, the internet made all trademarks essentially nationwide. In other words, I’m not talking about the geographical market. On the other hand, you can still have identical trademarks used by independent entities. For example, you may use “Aweriginal” for your grocery store while “Aweriginal” has been used for decades by someone else for a beauty salon service.
Although there is no clear cut answer to what types of good/service can be said to be distinctive (or in different markets), you can more often than not rely on international classes. To narrow your search to a specific international class, you should use “Structured Search”.
Searching for anything with “awe-” in advertising and business category only.
In doing so, you can eliminate a lot of candidates that are too similar to already existing marks.
Use common sense
If your brand name reminds of someone else other than you, it’s not a good name. If your name tricks a customer into a belief that they are buying from someone else, it goes against the very idea of trademark: it should tell consumers where the good/service comes from.
Similarly, if your brand name simply tells what the good/service is, it’s not a good name. It should tell where it comes from, but not what it is.
Tips for good naming
I digress. This article is actually about how to give a good name. All I said so far is how to avoid bad names.
So, here are some hacks.
Tweak spellings
This is probably all too familiar. Our example “Awerigional” is indeed a tweak of “original” using awe- instead of “o”.
Use suffixes
If you are fond of a certain word or common name, you can add suffixes to it for extra distinctiveness. If I were to use my name “Jeon” for a trademark, I would soon realize there are more than 500,000 people with the same name in South Korea alone.
However, Jeonish, Jeonastic, and Jeonity are all pretty distinctive and easy to remember names if you’re already familiar with the “Jeon” name.
Make it simple
A catchphrase is very attractive, but it does not go far legally. It’s not to say that you can’t have a phrase registered as a trademark. In fact, it’s often easier to have a phrase registered than a word.
However, when it comes to trademark protection, it should not just protect against identical copycats but also against similar rip-offs. As phrases often convey a meaning, your competitors can easily claim that they’re just using the phrase for the meaning.
So, “it’s so deli-cious” is never be a good name for your delicatessen however tempting.
Use it properly
My final advice has nothing to do with naming. Nonetheless, if you’re using a good name the wrong way, it would be shame.
Don’t refer your product/service by just the trademark. For example, don’t call your specialty raisin bread Aweriginal. It should be Awriginal raisin bread. It’s true even if no other bread in your bakery is called Awriginal.
Patent protects inventor’s exclusive right to an invention, but at the same time it aims to promote further advancement of the same technology.
These are conflicting goals for which patent provides a comprehensive exclusivity that is also clearly defined.
If you are considering patenting your invention, you should first understand the limitations which define the scope of your patent right.
Patent limitations
It is often said that patent protects an idea or more specifically a product. However, technically, a patent is a document that claims rights to a certain combination of characteristics included within the idea or product.
Let me illustrate with a hypothetical whitening cosmetic product. In your patent, you claim rights to a product
that includes whitening ingredient A and
moisturizing ingredient B
in a solution.
Anything that includes all three of limitations above can infringe the patent unless the patent owner allows it.
I said “all three”, so if one sells a product containing ingredients A and B but in a solid form instead of a solution, your patent can’t stop it.
Overcoming limitations
To avoid a situation where your right is limited in a way that can be easily designed around, your claims need to be as less limited as possible.
For example, you can claim rights to a product
that includes whitening ingredient A and
moisturizing ingredient B.
This can protect anything that contains A and B at the same time. However, on the other hand, if there was anything that contains A and B at the same time before your invention, your invention is no longer “new”, which is a requirement to get patented.
Not convinced? Let’s say your ingredient A is extracted from apple and ingredient B is glycerin. You can easily find a beauty tip suggesting an addition of glycerin to apple juice for a homemade facial mask.
Hence, in all likelihood, you will claim something like
a solution
that contains no less than 0.2% of whitening ingredient A
and no more than 5% of moisturizing ingredient B.
Well, let’s say in the nature you will not find an apple that has so much enriched with the A.
Design around
Now you have clearly defined patent claims. It’s time for your competitors to find a way around it. We call it a design-around.
For example, your competitor can market a product that contains 0.19% of whitening ingredient A. As explained above, this does not infringe your patent.
Patent sounds pretty useless now? Well, not so fast. There should be an assumption that if A is less than 0.2%, the product will not have adequate potency to brighten skin complexion.
The same goes to ingredient B. You should set the numbers in a way that, for example, if you have more than 5% of B, the solution will be too sticky to be easily applied on skin.
Conclusion
Getting a patent is easier than you think, but getting a strong patent is harder than you think.
In fact, when you apply for a patent, the patent examiner at USPTO will find something like homemade facial mask to say your invention is not new, during a process called Office Action. You can overcome the argument by adding limitations such as 0.2% and 5%.
In so doing, you may end up with a weak patent unless you anticipate ways to design around and make it harder for your competitors.
To register a trademark, you need to either (1) have used a mark (could be a brand name, a company logo, or even a unique color) in association with your good or service or (2) have a bona fide intent to use it.
Many clients reported that they received an unsolicited service invoice from Service BPM 326634 at 8345 NW 66 ST #2000 33166-7896 Miami, which looks like this:
It has nothing to do with your U.S. trademark registration, and you are advised to ignore and discard it.
If you have questions regarding trademark protection in other countries than the U.S., please contact your attorney.
The USPTO has helpful videos and TEAS instructions to help out trademark applicants, but how disclaimer affects your legal rights and potential to be initially rejected for registration via office action?
Let’s talk about the disclaimer in terms of registrability and trademark owner’s right.
I help many clients who received cease and desist letters stating their products infringe some patent rights. By the time they come to me, it’s about ruling out frivolous claims, mitigating damages if not frivolous, and reducing costs related to settlement and litigation.
What if you can avoid all those by doing these simple things before launching your product?
Just google trademark registration, and you will see a bunch of under-$100 trademark services online. How is it possible? There is a hidden cost of trademark registration: your mandatory response to the USPTO’s initial conclusion that your mark is not registerable. (SeePossible Grounds for Refusal of a Mark | USPTO) By the way, this type of office actions are quite common.
Service BPM 326634 at 8345 NW 66 ST #2000 33166-7896 Miami, which looks like this:
