As a full-service advertising and branding agency, we here at the Envision Group apply for trademarks at least a dozen times a year. Nothing more easily enhances or visually legitimizes your logo like the registered trademark bug: ®. In addition to logos, we recommend that our clients trademark their tagline, company name and any special programs they have developed. This shields them from encroachment in their own markets and lends them credibility in others. At $275 a pop, it’s a pretty inexpensive way to protect your brand and boost your status.

Registering a trademark is not difficult, but it is complicated. That’s why, when we offer to handle the process for our clients, they usually accept. Anybody can log on to the USPTO website, upload a file, pay the money and be done with it, but there is no guarantee that an application will be accepted, and that $275 fee is completely non-refundable.

In our years of registering trademarks for our clients, we have run into a lot of obstacles, but we have seen every single application successfully registered. Most importantly, we have learned enough with each experience to make the next one go a little more smoothly.

First and foremost, do some extensive research on whatever it is that you are trademarking. Google it. Go to GoDaddy and use their domain name availability feature. Go to uspto.gov and check their TESS library to see if your item is even open to trademark. There are very few truly original ideas, and a lot of the time, someone is already using your name. But don’t despair. You can still get a trademark as long as the offending user is in a different industry.

Next, READ EVERYTHING. There is a lot of type on that USPTO website, and a lot of compound sentences filled with twenty-five cent words. If you just take the time to read it all, you will get the gist of it, and absorb the really important parts. The USPTO is under no obligation to accept your application, and they’ll deny an improperly filled-out form, so take your time, and double-check your entries.

The USPTO site will ask you to provide a description and upload an image of the item you wish to trademark, as it appears in commercial use. It is imperative that you read the rules for this part. The USPTO is extremely picky about what they will accept as evidence, and if your explanation is not completely explicit and clear, they will deny you.

Another challenging part is determining what SIC (Standard Industrial Classification) code to register for. Each additional code costs another $275, so be certain that you really want your name to be protected in all the industries you select. However, you may choose as many sub-categories within a single SIC code as you wish without any additional charges, so be sure to read them all.

Once you are past these hurdles, all that is left to do is sign and pay. And wait. And wait. And wait some more. The USPTO will send you a confirmation email with your application serial number immediately after you pay, but you may not hear from them again for eight months! It’s actually a good sign if there is no noise from the USPTO for half a year. They will contact you by email much sooner than that if there is a problem with your application.

This email informs you only of the existence of a problem with your application. It will not tell you what the actual problem is, or how to correct it, but will provide you with a link, which provides you with another link, which takes you to the ocean of words that is a USPTO action.

In our experience, there are three main reasons that the USPTO will deny your application:
• The commercial-use specimen is not accepted
• The description of the commercial-use specimen is not accepted
• The item being trademarked does not exactly match the commercial-use specimen

All three of these issues can be easily solved by following the directions within the action. Again, READ EVERYTHING. Sometimes they’re just asking you if you want to trademark individual words within your business name or tagline. Often times, once you re-submit a specimen, or clarify your description, everything works out just fine. On other attempts, you may have to respond to actions several times before your application is finally accepted.

Do not be discouraged by initial rejection. Remember, if you abandon your application, you abandon your $275. If you are confused, just talk to someone. The employees of the USPTO are very helpful by phone or email, and their contact info is all over the site. They will help you get registered.

Once your application is finally accepted, it will be published for opposition. This is just one last chance for anyone to challenge your ownership of a mark. I’m sure it happens, but we’ve never experienced any opposition after publication. Then, nine months to a year from when you first started the whole process, you will receive a beautiful, folded certificate on thick, artisanal paper with a gleaming gold seal, and with your logo, business name or tagline printed at 30-point text on the inside.

Congratulations, you have now earned the right to use the registered trademark bug (®) at will. Be sure to renew in six years, or you’ll have to start the whole thing all over again.

—Lisa