Alex is Sprintlaw's co-founder and a legal technology leader. He holds law and media degrees from the University of Sydney and has been recognized by Australasian Lawyer, Lawyers Weekly and the Sydney Young Entrepreneur Awards for his work building Sprintlaw and improving access to business legal support.
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Registering a trademark is a significant move for US founders and business owners who want to protect their brand and stand out in the market. But the process is not just paperwork. Many founders make avoidable mistakes, like filing in the wrong name, skipping a proper search, or misunderstanding what can be protected, that can lead to refusals, delays, or even legal disputes. This guide explains what you should review before you register a trademark, including ownership, searches, risks, and how to avoid common pitfalls. With practical checklists and examples, you will learn how to make informed decisions about your intellectual property before investing time and money in a trademark application.
Understanding What a Trademark Protects (And What It Does Not)
Before you file, it is essential to know what a trademark covers. In the US, a trademark is a word, phrase, symbol, design, or a combination that identifies and distinguishes your goods or services from others. This helps customers recognize your brand and prevents competitors from using confusingly similar marks.
Trademarks do not protect ideas, inventions, or the content of your products. Those are covered by patents and copyrights. For example, you can trademark your business name, logo, or a product name, but not the recipe for your product or the code behind your app.
Federal trademark registration is managed by the United States Patent and Trademark Office (USPTO). Registering gives you exclusive rights to use the mark nationwide for the goods or services listed. However, trademark rights in the US are based on actual use, not just registration. You may have some protection from using your mark first, but registration strengthens your position and makes enforcement easier.
State trademark registration is also available. It only protects your mark within that state. If your business is local or federal registration is not possible, state registration may be useful. But for most startups with plans to grow, federal registration is the stronger option.
Confirming Ownership and the Right Applicant
One of the first things to check is who should own the trademark. The applicant must be the person or entity that owns and controls the mark in commerce. Filing in the wrong name can void your application.
- Sole proprietors usually file in their own name or their registered business name (DBA).
- LLCs and corporations should file in the company name, not the founder's name, if the company owns and uses the mark.
- Partnerships may need to file in the partnership name or list all partners, depending on the business structure.
Common mistakes include filing in a personal name when the company is the real user, or filing before the company is formed. If you plan to transfer the mark to a company later, it is usually better to wait and file in the company's name from the start.
Check your business formation documents, contracts, and any agreements with co-founders or investors to confirm who owns the brand assets. For example, if two founders have contributed to the brand, clarify in writing who will own the mark. Addressing ownership early helps avoid disputes and ensures your registration is valid.
State law can affect who is recognized as the owner, especially for partnerships or unregistered businesses. Some states have specific rules about who can register a trademark and what evidence is needed to prove ownership. Review your state's requirements if you are registering at the state level.
Conducting a Thorough Trademark Search
Before you register a trademark, you must check if someone else is already using or has registered a similar mark. The USPTO will refuse your application if there is a likelihood of confusion with an existing mark. Even if your application is approved, you could face legal action from another business with prior rights.
Start with the USPTO's Trademark Electronic Search System (TESS). Search for marks that are similar in sound, appearance, or meaning, and that cover related goods or services. Do not just look for exact matches. Consider spelling variations, synonyms, and similar logos.
Also search state trademark databases, business name registrations, domain names, and social media handles. In the US, businesses can have common law rights from use even if they have not registered their mark. These rights can block your registration or lead to disputes.
Here is a practical checklist for your search:
- USPTO TESS search for similar marks in your class of goods/services
- State trademark office searches (if operating locally or regionally)
- Business name and fictitious name (DBA) registrations in relevant states
- Internet domain name availability
- Major social media platforms for existing accounts using your mark
- General web search for unregistered but used marks
If you find similar marks, assess how close they are and whether they cover related goods or services. For example, if you want to register "Blueberry" for clothing and someone else has "Blueberry Apparel" for shoes, there could be a risk of confusion. If there is a real risk, you may need to choose a new mark or adjust your branding before filing. For valuable brands or higher-risk situations, consider getting a professional search and legal review.
State rules can vary. Some states have their own search tools and may require you to check for similar marks registered in that state. If you are registering at the state level, make sure to follow your state's process and check for local conflicts.
Assessing What Can Be Registered
Not every name, logo, or slogan can be registered as a trademark. The USPTO will refuse marks that are generic, merely descriptive, deceptive, or likely to cause confusion with existing marks. Here are some common pitfalls:
- Generic terms (like "Computer Store" for a computer shop) cannot be registered.
- Descriptive marks (like "Creamy Yogurt" for yogurt) are usually refused unless they have acquired distinctiveness through long use.
- Geographically descriptive marks (like "Seattle Coffee" for coffee) face extra scrutiny.
- Surnames (like "Smith Plumbing") are difficult to register unless they have become distinctive.
- Immoral, deceptive, or scandalous marks are not registrable.
- Marks that are confusingly similar to existing registered or pending trademarks will be refused.
Strong trademarks are fanciful (made-up words), arbitrary (real words used in an unrelated way), or suggestive (hinting at qualities without describing them directly). For example, "Kodak" (fanciful), "Apple" for computers (arbitrary), and "Netflix" (suggestive) are all strong marks.
Before filing, review your mark and consider whether it is likely to be accepted. If your mark is weak or descriptive, you may face extra hurdles or need to provide evidence of acquired distinctiveness. For example, a bakery called "Fresh Bread" may have trouble registering the name unless it can show long-term, exclusive use that has made the name distinctive.
State trademark offices often follow similar rules but may have additional requirements or allow some marks that are not registrable federally. Always check your state's guidelines if you are filing locally.
Preparing To File: Use In Commerce and Specimens
The USPTO requires you to state whether you are already using the mark in commerce or intend to use it in the future. "Use in commerce" means the mark is being used to sell or offer goods/services across state lines or in a way that affects interstate commerce.
- Use-based applications (Section 1(a)): You must provide a specimen showing the mark as used on your goods or in connection with your services. Examples include product packaging, labels, website screenshots showing the mark next to a purchase option, or service advertisements.
- Intent-to-use applications (Section 1(b)): You can file before using the mark, but you must show use and submit a specimen before the registration is finalized. There are extra steps and fees for this process.
Common mistakes include submitting mockups or promotional materials that do not show actual use, or filing before you are ready to use the mark in commerce. If you file too early, you may have to restart the process or risk refusal.
Check that your specimen:
- Shows the mark as consumers see it (on products, packaging, website, or ads)
- Matches the mark exactly as filed (same spelling, design, and format)
- Is not just a business card or letterhead (unless that is how your services are offered)
Review your business timeline. If you are not ready to launch, an intent-to-use application may make sense, but be prepared for the extra steps. If you are already selling or offering services, gather strong specimens before filing.
State trademark offices may have different requirements for showing use. Some states only require a simple statement of use, while others require evidence like photos or advertisements. Check your state's rules before submitting your application.
Risks, Costs, and Common Filing Mistakes
Filing a trademark application involves fees, time, and potential risks. The USPTO charges a nonrefundable fee per class of goods/services, and additional fees apply for intent-to-use filings and other steps. The process can take 9 to 18 months or longer, especially if there are objections or oppositions.
Some common mistakes founders make include:
- Filing before confirming ownership or business structure
- Not conducting a thorough search for existing marks
- Choosing a weak or descriptive mark that is hard to protect
- Submitting the wrong specimen or filing before actual use
- Listing goods/services too broadly or narrowly
- Missing deadlines for responses or required filings
- Assuming registration is automatic or guaranteed
There are also risks if you try to register a mark that is already in use by someone else, or if your mark is too similar to a competitor's. This can lead to legal disputes, forced rebranding, or even damages claims. For example, a startup that launches a new app under a name already used by another tech company may be forced to change its name and lose brand recognition.
Budget for the full process, including possible legal or professional fees if you need help with searches, responses to USPTO office actions, or enforcement. If your brand is a key business asset, consider getting legal review before filing to reduce the risk of costly mistakes. Reviewing your contracts related to brand ownership can also help avoid future issues.
State trademark filings are usually less expensive and faster, but offer narrower protection. Fees and requirements vary by state. Some states require periodic renewals or additional filings to maintain your rights. Always check your state's rules and budget accordingly.
FAQs
Can I register a trademark before I start using it?
Yes, you can file an "intent-to-use" application if you plan to use the mark in the future. However, you will need to show actual use in commerce and submit a specimen before your registration is finalized. There are extra steps and fees involved in this process.
What happens if someone else is already using a similar name?
If another business has prior rights to a similar mark for related goods or services, your application may be refused, or you could face a legal challenge. Even unregistered (common law) use can block your registration or lead to disputes. Always conduct a thorough search before filing.
Do I need to register my trademark at the state level?
State registration is optional and only protects your mark within that state. Most businesses seeking broader protection should apply for federal registration with the USPTO. However, state registration may be useful for purely local businesses or if federal registration is not available for your mark.
How long does the trademark registration process take?
The process typically takes 9 to 18 months, depending on whether there are objections, oppositions, or requests for additional information. Delays are common if there are issues with your application or if you need to respond to USPTO office actions.
Can I trademark a logo and a name together?
You can file for a word mark (just the name), a design mark (logo), or both. Filing for the name alone gives broader protection, while a logo registration protects the specific design. Many businesses choose to file separate applications for each.
Key Takeaways
- Confirm ownership and file in the correct name to avoid void applications.
- Conduct a thorough search for similar marks at the federal, state, and common law levels.
- Review whether your mark is strong, distinctive, and eligible for registration.
- Prepare proper specimens and understand the difference between use-based and intent-to-use filings.
- Be aware of costs, timelines, and the risks of filing without review.
- Consider professional help for valuable brands or complex situations.
Ready to take the next step in protecting your brand? If you have questions about how to register a trademark, need help with a search, or want a legal review before filing, contact our team at (888) 449-8437 or team@sprintlaw.com. Where legal services are required, they are delivered by licensed lawyers at trusted US law firms through the Sprintlaw platform.
