How to Protect Your Trademark
From choosing a strong trademark to seeking federal registration and beyond, protecting your trademark requires ongoing effort and attention. We’ve broken down the how-tos of the trademark protection process to help guide you throughout your trademark journey.
Steps for Protecting Your Trademark
1. Choose a Strong Trademark
Choosing a strong trademark is one of the best things you can do to protect your brand. A strong mark not only helps your company stand out, but it adds muscle to your trademark rights.
Trademark strength is split into five levels. Moving from strongest to weakest, these include: fanciful, arbitrary, suggestive, descriptive, and generic.
Strong trademarks are better protected than their weaker counterparts because of their distinctiveness. The more creative and distinct your trademark is, the better it acts as a “source identifier” for your goods/services—and the easier it is to claim as yours.
If a trademark is too weak to act as an identifier (looking at you generic marks), it cannot be registered by the United States Patent and Trademark Office (USPTO).
When you use Northwest’s Trademark Service, we assess the strength of your trademark and provide feedback if we discover it is lacking.
2. Conduct a Clearance Search
Once you’ve chosen a strong trademark, the next step is to make sure it’s not already in use by another business. A thorough clearance search involves digging through websites and databases like:
- Trademark Official Gazette
- Trademark Search
- State business registries
- State trademark databases
- Domain registries
- Social media
- General search engines
What should I look for in a clearance search?
During a clearance search, you’re looking for likelihood of confusion. This concept asks whether similar marks could reasonably lead to consumer confusion about who is providing the goods/services.
For example, Dove® is a registered trademark of two brands: one that sells chocolates, and another that sells soaps. Likelihood of confusion doesn’t exist here because the products in question are totally separate. But if Dove Cookies wanted a trademark, they may be met with resistance—it would be reasonable for consumers to assume cookies and chocolates are coming from the same company.
4. Register Your Trademark
After confirming that your trademark is unique within its industry and strong, the next layer of protection is to seek federal trademark registration. By registering your mark with the USPTO, you receive the broadest national trademark protections available.
So, what rights and protections do you earn with federal registration that you don’t otherwise qualify for?
- Use of ® symbol
- Ability to sue for trademark infringement in federal court
- Protection and enforcement abilities in all 50 states
- Customs and border enforcement
The federal registration process generally takes at least 12 months to complete, but can take longer. Filing costs a minimum of $250 or $350, depending on the type of trademark application you use.
Throughout the registration process, pay careful attention to correspondence from the USPTO and any new deadlines that come up. It is common for applications to receive office actions, and failing to respond can lead to your trademark application being abandoned.
5. Monitor for Infringement
Once your trademark is registered, protection takes the form of monitoring for infringement and enforcing your trademark rights.
Trademark monitoring is similar in scope to a clearance search, involving digging through the same kinds of sites and databases. But where a clearance search is typically a one-time thing, trademark monitoring is most successful if done regularly throughout the life of your trademark.
You can monitor your trademark yourself or you can hire a trademark monitoring service, which uses software to do this legwork for you.
What if I discover trademark infringement?
If and when trademark monitoring reveals infringement, there are a few routes you can take to protect your mark. Suitable options will depend on circumstances like the extent of infringement and when it was discovered. It may be helpful to talk to a trademark attorney about your options.
Some infringement remedies include:
- Sending a cease and desist letter
- Suing in federal court
- Petitioning to cancel a registered trademark
- Opposing a trademark application
6. Maintain Your Trademark
Maintaining your trademark is one final piece of the protection puzzle. In order for a federally registered trademark to stay registered and hold on to its protections, it must be regularly renewed.
The federal trademark renewal process breaks down like this:
- Years 5-6
The first trademark renewal filing is due between years 5 and 6 following registration. Submit the Declaration of Use and/or Excusable Nonuse under section 8, along with $225 per class.
- Every 10 years
The next trademark renewal filing is due between years 9 and 10 post registration. Submit the combined Declaration of Use and/or Excusable Nonuse and an Application for Renewal under sections 8 and 9, along with $525 per class. This filing will be due on a 10-year rotation for the life of your trademark.