How to register a trademark
The filing form is the easy part. Everything that determines whether the application succeeds happens before and after it.
Registration is less a form to fill in than a sequence of decisions, most of which are made before anything is filed and are awkward to change afterwards.
1. Find out whether the name is available
Searching first is the step most often skipped and the one that most often turns out to have mattered. A search looks not only for identical marks but for similar ones used on related goods, because that is the standard the examiner will apply.
The point is not only to avoid a refusal. It is to find out before the packaging is printed and the signage is up.
2. Decide what the mark actually is
A word on its own, or the stylised version. They protect different things: the word mark covers the name however it is written, while a design mark is tied to that particular treatment. Businesses that have just paid for a logo often instinctively file the logo, which is not always the stronger choice.
3. Choose the classes
Registration is granted for particular goods and services, not for a name in the abstract. Each class costs a separate government fee, so the temptation is to file narrowly — but a class you leave out is protection you do not have, and adding one later means a new application.
4. Use in commerce, or intent to use
If the mark is already being used in trade, the application can say so. If it is not, it can be filed on the basis of an intention to use it, which reserves a place in the queue — but the use has to be shown before registration is granted.
5. Specimens
Proof that the mark is used the way the rules require: on the goods or their packaging, or in connection with the services. This is a common reason for a refusal, because a mock-up or a logo on a website is not always enough.
6. What happens after filing
An examining attorney reviews the application, and may raise issues in an Office Action. If it clears examination it is published, giving others a window to oppose. If nobody does, registration follows — and then maintenance filings keep it alive.
The sequence takes months rather than weeks, and longer if anything is raised.
Can you do this yourself?
Yes, and plenty of people do. The application form does not require an attorney for a domestic filer, and for a simple mark in a clear field the process can be straightforward.
What self-filers most often come unstuck on is not the form: it is filing without a proper search, choosing the wrong classes or the wrong form of the mark, and submitting a specimen that does not qualify. Those are also the ones that cost the most to fix, because some cannot be fixed at all without starting again.
This page is legal information, not legal advice, and does not create an attorney–client relationship.