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The #1 Trademark Registration Requirement for Online Brands

researching the trademark registration requirements

Curious about trademark registration requirements in the US? Today we’re talking about the number one most important thing that you need in order to file for federal trademark protection in the US.

I’m going to cut to the chase, the number one most important thing that you need in order to successfully register your trademark is use of the trademark in interstate commerce.

Whaaaat? What does that mean, exactly? Well, it means that you have to be able to show that you use your trademark across state lines. That can be a little bit harder for hyper-local businesses, or businesses that don’t do any business online. But if I know you, you absolutely do business online. In fact, you might only do business online.

So how does this trademark registration requirement play out? How do you show that you’re using a trademark across state lines? Well, when you file a trademark application, you have to submit what’s called a “specimen.” (Unless you haven’t started using your trademark yet, and then that’s a whole other can of beans.) Your specimen will show exactly how you’re using your brand. It will likely be a screenshot of your website and the services that you offer under your website. It also could be a screenshot of your podcast on Apple, or a screenshot of your video show on YouTube. If you promote others’ products and services on social media as an influencer, you can submit screenshots of your account where you promote those goods and services and your trademark might be your Instagram handle.

Bottom line, though, is that the best way to show that you’re using a trademark across state lines is to offer services across state lines by using the internet. And, if you have an internet-based business, you’re probably already doing that. Which mean you have this trademark registration requirement in the bag!

The Trademark Registration Process in 5 Steps

reading about the trademark registration process

Jump in with me today where we are talking about the trademark registration process in five steps.

Step 1: The Search.

You must do a trademark clearance search. For me, the trademark registration process begins with a search 98% of the time. Every once in a blue moon, a client really really really does not want me to. And even then, I will coach a client through the reasons why to do a trademark search. And here’s why!

A good trademark search will show:

  • The likelihood that you will succeed with registering your trademark;
  • Whether you can protect your trademark; and
  • Whether you can use your trademark.

Remember that in the US there’s something called “common law” trademark rights. And that means that you don’t have to register your trademark in order to have some rights. So a good search will look — yes, on the Trademark Office website — but also everywhere, to make sure, okay, is there any risk if I continue to use this trademark? Does someone else have more solid rights in this trademark than I do?

Step 2: The Prep.

If the clearance search comes back a-Okay, then the next step of the trademark registration process is gathering materials. We need proof that you are using the trademark in connection with your services. (Like, say, podcasting services.) We need information about the owner: name, address, blah, blah, blah. And we take all of that information along with a good specific list of the services or products that you offer, and put it into the application.

Step 3: The Filing.

Of course, the trademark registration process all depends on actually filing an application! So step 3 is, we file.

Step 4: The Wait.

Step four: we wait… and wait… and wait.

Why? Because nobody at the Trademark Office is going to look at that application for at least three, three-and-a-half months, depending on how backed up the Trademark Office is.

Step 5: The Publication Period.

During the trademark registration process, there is a 30-day period called the “publication period.” In that 30-day period, anyone that feels that they would be damaged by the successful registration of your trademark can file what’s called an “opposition proceeding.” It’s like a little mini lawsuit that takes place completely within the Trademark Office, online. But that 30-day window exists so opponents can either file one, or file an extension so they assess whether they actually want to oppose. So long as no oppositions are filed, the trademark moves on to successful registration!

Recap of the 5 Steps in the Trademark Registration Process

So 1) search, 2) gather materials, 3) apply, 4) wait, 5) publication period. And then you are good to go. It’s super rare that a trademark wouldn’t proceed to registration after that.

Now, there are a few little things that might change up those five steps. If you’re not yet using the trademark, or if the application is rejected, those can cause a little bumps in the road.

But I hope that this explanation helps you understand the trademark registration process in the US, and I’ll see you next time.