FREQUENTLY ASKED QUESTIONS Trademark Registration Step By Step

Trademark registration can seem like a long and arduous process, and that’s not counting the trademark registration cost. Andrei Mincov will share his expertise in trademark companies to explain the process step by step.

At Trademark Factory, we do what we can to make the cost to register a trademark as low as possible. Other trademark companies may have their own processes, but Trademark Factory has its own proprietary process. 

I’m going to share with you our proprietary process. We call it TMs into Rs which helps you visualize the whole journey from you have an idea of a brand to having a trademark registration certificate hanging on your wall.


Step 1. Finding What You’re Trademarking

So the first step is for you to figure out what it is that you want to trademark. And believe it or not, it's probably one of the most important parts of the process because you need to understand. 

Are you going to trademark the name, are you going to trademark the logo, are going to trademark the tagline, if it's a name, how are you going to do this?

Is it going to be, you know, the full name, maybe a part of the name, and there's a lot of interesting combinations again, depending on what you have as a brand, what you've picked as a brand for your product or your service, so assuming that you know exactly what you want to trademark, right and we call them brand elements because you have one brand right? 

Let's make it very clear. You are building one brand. 

But inside that one brand can be as many brand elements as you can think of. 

Like, for example, I recently did a video on Amazon. They've got close to 1300 trademarks in the US alone. Right? So you got one big brand and under that big brand, they've got brand elements. Okay.

So, most small businesses won't have anything close to 1300 trademarks or 1300 brand elements. But most of them will have several. 

Like I said the name, the logo, the tagline, things of that nature. Trademarking each of these elements will affect the trademark registration cost. Those are the things that you come up with when you're launching your business, launching your brand because you think that the brand is going to help you build a more successful business, right? 

So the first step is like I said for you to figure out what are those brand elements that are worth protecting. If they’re worth protecting, they’re worth the trademark registration cost.

Step 2. Figuring Out What’s Trademarkable

The second step is to find out - are even trademarkable? If those brand elements that you came up with are, can you even own them? 

Because if it turns out that you can’t, then that’s sort of the end of the trademarking process, right? 

So this is accomplished by doing a trademark search that involves checking the data basis of the relevant trademark agencies and the trademark offices in countries you want to expand to. 

In theory, you could do it yourself. 

I strongly recommend that you don't. 

It doesn't cost too much for you to hire somebody who understands how to interpret the search results. In fact, overall, you’ll probably save more money, time, and effort over time by hiring a professional.

And if you're planning to do something with your business, with your brand, it's certainly an investment worth making because what if you did the search, you interpreted the results incorrectly and you are overly optimistic. 

So let's say you pick a name, you do the search and then you start investing more and more and more money into building your business, building your brand, and then it turns out that whoops! You can't trademark it. 

You get a rejection from the trademarks office and you can't overcome it. That’s the information you want to know as soon as possible, as soon as you've come up with a brand as to whether it's a brand you can own.

Step 3. Filing Your Trademark Application

The third step is to file your trademark application. So let's say you know what you want to file, you know it’s trademarkable. You’re willing to pay the cost to register a trademark and all the elements associated with it. Then you draft the application. There's a lot that goes into the trademark application. Usually, it's four elements.

One is the trademark itself. What is being trademarked? It's the same thing that you figured out in step one, the brand element, the name, the logo, and the tagline.

The second thing you got to figure out is who is going to own it. Is it an individual? Is it going to be you as a company? Is it your LLC? You need to decide who's going to be.

The third part of the application is the goods and services that your application is going to cover. This is also very important because trademarks don't give you an absolute monopoly over the trademark, the name, the logo, the phrase, the tagline, or whatever. 

The trademarks are very specific to goods and services for which you claim protection. 

So, for example, Apple, they don't own the word Apple. They own the word Apple in connection with phone software, computers, and things like that. But they don't own the word Apple for apples. They don't own the word Apple for - I don't know - excavators. They don't own the word Apple for spoons, right? 

So, when you file your trademark application, the third element of that is the goods and services that your trademark application is going to cover.

And the fourth step, the fourth element of the application is the dates of first use. 

So not all countries require that. In fact, most countries actually don't. But if we're talking about the US, you would need to provide the information as to when you started using the trademark in business or if you're just planning to do that in the future. 

So that would be something that would go in your trademark application. 

And of course, before you file it, well, one of the things you have to decide is which countries you want to cover with your trademark. What markets do you want to expose to your trademarked product?

Because trademarks are down on a per-country basis. If you're a US business, you probably want the US trademark. And if you're selling your products or services to other countries, and those markets are important to you, you have to file those trademarks in those other countries as well. 

So I'm not going to spend too much time on the where because you'll find this the answer to that in videos. But just know that trademarks are done on a per-country basis, and if you want to trademark a product in a certain country, you have to follow their distinct process. 

Step 4. Getting Your Trademark Application Approved

The fourth step of the trademarking process is to fight to get your trademark application approved and allowed. 

When you file your trademark application, nothing happens. You just sit and wait. Sit and wait for several months - and sometimes several years really - before you hear back from the trademarks office. 

In some cases, in about thirty percent of the cases, in fact, everything goes through smoothly. 

The Trademark Office gets your application, it gets approved and allowed right away. And you're just like, “yes, it was so easy. It's amazing. I'm so happy!”


But in more cases than not, in about 70% of the cases, instead of “congratulations” from the trademarks office, you're going to get a letter that's called an office action.

That office action will list objections about the things that they didn't like about your trademark application. And you need to do something about it because if you don't your trademark will be rejected and that will be the end of your process. If you don’t address the problems and concerns, you will have to start all over again.

So this back and forth could involve you tweaking your application so that the trademarks office approves it or sometimes you have to fight with them. Sometimes you have to bring arguments that say that will prove to The Examiner that you're right and they're wrong. 

That's really where the most time is spent by trademark attorneys with the trademark application because a monkey can file your trademark application. That's why there are so many websites out there that will file your trademark for next to nothing. 

It's what happens after that matters. It's what happens after where you actually need experience. It’s what happens after where it really makes the difference between somebody who is just a trademark filer and somebody who is experienced in getting the job done.

So that's the back and forth on the examination stage.

Now let's assume that your trademark gets approved. 

Once it's approved, it will be published for opposition purposes. And what that means is your trademark application will go in some published form. It could be a newsletter, a journal, or a digital format. 

The purpose of that is to give the public the ability to raise their hand and say, “oh, I don't want this trademark to be registered because it would impact my rights and I think I have prior rights to this name, to this logo, to this tagline. And so please, dear trademarks office. Please don't give it to those people who just applied for that trademark.” 

And that's called opposition. 

For the most part, it happens very rarely because I mean, who monitors those trademark applications that are filed right? 

There are 50,000 trademark applications that fall in Canada every year. There are over 600,000 trademark applications filed in the US every year and over 7 million trademark applications filed in China every year. So, you know the tiny percentage of business owners are monitoring whether somebody's trying to file a trademark similar to theirs. 

And so in the vast majority of cases, your trademark application will go unopposed, and if it does, great, then it just gets allowed. 

But in about one percent of the cases, you will face the opposition and then you have to deal with the opposition and sometimes it can get so nasty. It really becomes an in-person hearing in a court, like a lawsuit. It is just a lawsuit within the Trademarks Office’s system. 

So not in court, but within the trademarks office, it could be a trial and appeals division or the opposition board. Different countries have different names for it, but that's where the opposition disputes can be heard. 

After this let's assume that your trademark got approved. It got allowed, then what?

Step 5. Finalizing Trademark Registration

The fifth step is for you to finalize your registration. 

There may be some formalities with your trademark application after it gets allowed. 

In the US, if you filed for your trademark on an intent-to-use basis - a.k.a. before you start selling your products or before you start offering your services under that brand - you will need to have protections for it. 

After that, I'm going to put the products and services on the market. That's an intent to use the trademark.

So if you're allowed, then you have to show to the trademarks office the evidence that you've started using the product or the service for example under that brand name. 

There may be some post allowance registration fees or some other formalities again, depending on the country. 

Once you have taken care of those, then you get your trademark registration certificate. And you could put it in a frame. You can put it on your wall. You can do whatever you want with it.

Final Steps. Follow-Up and Renewal with Trademark Companies

You may be thinking “What do you mean by the last step, we just did the last step, right?” 

Well, yes, but after your trademark is registered, there are one or two more things that you need to do. 

One is you need to renew your trademark. 

In most countries, all you need to do is just to renew your trademark every 10 years. 

The good thing about trademarks is that you can renew them forever over and over and over and over and over again. For example, Coca-Cola has been renewing its trademark since 1892.

The second thing you need to do is monitor others trying to file a trademark similar to yours. 

Remember, I mentioned opposition, which is how somebody can oppose your mark, but most people don't do that. 

Well, you need to monitor your brand to make sure that nobody is trying to get into the segment of the market that you value under a brand that's too close to yours. That's the monitoring part of that and we call it follow-up.

So there are six steps to this process and they all start with an F. 

So the first step is to figure out what it is that you want to trademark then find out if it's trademarkable, file it, fight to get it approved allowed, finalized, and then follow up to make sure you renew it and make sure you monitor others filing for a trademark that's similar to yours. Figure out, find out, file, fight, finalize, follow up. 

That's the trademarking process in a nutshell trademarking process step-by-step. 

As you can see, it's a pretty difficult process. It takes on average 14 to 18 months. In some countries, it takes longer than that and. Usually, it's not the process that you want to go through by yourself unless you know exactly what you're doing. 

So with Trademark Factory what makes us different, what makes us special, what makes us unique is that we have developed a process around these six steps that makes trademarking with Trademark Factory really the easiest way to protect your brand risk-free guaranteed anywhere. 

Here's how this works on the part of figuring out what it is you want to protect. 

Start by getting on a free call with one of our strategic advisors and they'll listen to your story. 

They'll understand what your business is all about. They'll figure out what brand you got what Brenda's is that you're trying to build and they will help you identify the brand elements that you should be trademarking.

The Real Cost to Register a Trademark: Time and Money

Then the second side of it, the second part, the second step is finding out whether or not it’s trademarkable. 

We offer a comprehensive trademark search that's included in all of our packages. If it turns out that your brand is not trademarkable, you get all of your money back.

So essentially you get a free consultation on why the brand you picked cannot be trademarked. 

Generally, other trademark companies charge about $300-$400 per search per brand. 

With us, it's all covered. It's all included. You don't pay anything extra and if it turns out that your brand is not trademarkable, you get a full refund. 


Disclaimer: Please note that this post and this video are not and are not intended as legal advice. Your situation may be different from the facts assumed in this post or video. Your reading this post or watching this video does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this post or this video as the only source of information to make important decisions about your intellectual property.