Are you struggling to know when it’s the best time to register a trademark for your business, product, or service name?

I’m willing to bet, you landed on this blog post because you aren’t sure if now is the right time.

Many small business owners jump the gun and waste money by registering their trademarks too soon. Or they register a trademark that only has weak protections and it doesn’t protect them in the way they hoped it would. And I hate to these things happen.

So how – and when – do you know it’s the best time to register your trademark? How do you know you’re in the sweet spot and it’s the best time to register a trademark?

Below I’m breaking down the three factors to determine if it’s the best time to move forward with the trademark registration process.

Best Time Factor #1: Eligible, but not unique.

The first factor that determines if you are in that sweet spot you know is that your name is eligible, but it’s not super unique. 

Because of this, you are worried that another business might come along and use the same name.

Like our Amazon Bookstore ladies, you’ll have strong legal rights to stop them from using the name, but it could quickly become an expensive battle. And so, registering it before someone swoops in is the smarter thing to do.

Best Time Factor#2: You are committed to the name

The second way to know you’re in that sweet spot is how committed you are to the name. Once you register your trademark, your first renewal opportunity is between five and six years. And I believe that if you aren’t renewing your trademark at that five-year mark, then what was the point of getting the trademark?

And so, I tell clients, let’s make sure that this is the name, that you’re sticking with. Let’s make sure that this is a name you’re set on and that you plan on using it for a while because getting a registered trademark is a $2,500 investment. And so, you want to make sure that that $2,500 investment is worth it.

Best Time Factor#3: You can afford to hire an attorney

Speaking of $2,500, that’s the third way to know that it’s time. That you either have $2,500 saved up or the cash flow that you can spend $2,500 that month.

I’m a big believer in DIY-ing things in your business. I do it all the time and I’m sure you do too.

And even though it’s not in my best interest, I often encourage clients to DIY legal projects.

And that’s because there are lots of legal projects that DIY-ing or using a service like LegalZoom is the smartest choice. But when it comes to trademarks, it is a terrible idea.

My quick answer is hiring a lawyer is a smart choice and investment in your business.

The longer answer is that there are three reasons why I am very anti-DIY and believe you should hire an attorney for your trademark application.

When you hire an experienced trademark attorney, she is going to:

• make sure you don’t waste money filing for a trademark you’ll never get
• increase your chance of getting your trademark
• knows how to get a trademark with the biggest value

How an attorney can stop you from wasting money

Many times I’ve been contacted by creatives who filed their application themselves and then reached out for my help when they ran into problems. 

Sadly, for some of them, I told them that I would have never submitted the application in the first place and they’d wasted their money on filing fees.

This is because either what they are trying to register:

• doesn’t meet the trademark requirements
• isn’t being used as a trademark
• is too similar to an existing registered trademark

So the first way an attorney can help you is by preventing you from wasting money on an application that will never get approved. Or spending money on getting a trademark that’s weak or hard to enforce against your competitors.

Sure, you’ll pay her for her time. But you won’t pay a USPTO filing fee. Which is at least $225. Plus whatever you pay for a service like LegalZoom.

And you won’t have your hopes dashed months later when the USPTO sends you an Office Action (more on that below.)

How an attorney can increase your chances of getting your trademark

After your attorney gives you the first benefit of saving you money. The next benefit she offers kicks in.

Because an experienced trademark attorney is 50% more likely to get your trademark registered.

I’m serious. And I’ve got a study from Stanford Law to back up my claim.

An experienced trademark attorney knows:

• what the USPTO is looking for
• how to write your application
• what to submit as proof
• how to overcome any objections to your application

And because of that, you are more likely to get your trademark.

How an attorney increases the value of your trademark

It might sound funny, but there’s an art to a trademark application. And understanding this art can drastically increase the value of your trademark.

An experienced trademark attorney knows how to get you a flexible trademark.

Your trademark only protects the exact products or services listed on your application.

Attorneys know this. So, they will try to get you an application that will cover the products or services you are likely to add.

This means you have the option of adding related products or services without filing a new application.

For example, Molly the Maker wants to register her trademark in her brand name, Lark Paper Co.

At the time of preparing her application, Molly only sells:

• holiday cards
• birthday cards
• blank cards
• art prints

But in the next few years, she hopes to also sell:

• stationery sets
• postcards
• calendars
• notepads

So when Molly completes her application, she selects from the USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual):

• Holiday cards
• Occasion cards
• Blank cards
• Art prints

But if Molly had gone to an attorney, the attorney might instead have selected:

• Paper stationery
• Art Prints

The attorney’s trademark will protect Molly for all paper stationery. While Molly’s trademark only covered the exact products she is currently offering.

Because of this, Molly can expand her line without filing for a new trademark. And if she plans on selling her business, the broader trademark makes it more appealing to buyers.

Sure with research, you might be able to get a trademark that’s the same as the one that’s filed by an experienced attorney. But wouldn’t you rather spend your time doing something else?

How much should be in your trademark savings account

Because I don’t think you should DIY your trademark, you’ll need to hire an attorney. 

So as you are working towards that sweet spot, then I encourage you to start a trademark savings account.

Your goal will be to save $2,500. This should cover:

• cost of hiring an attorney
• USPTO filing fees
• trademark search fees

So that’s how you know when you are in the sweet spot and it’s time to hire an attorney to register your trademark.

But what’s the trademark process like?

Once you’ve hit that sweet spot, you’ll start the process of getting your trademark.

Sadly, this process isn’t quick. Even when things go perfectly, these days can take 12-18 months from the time you file your application with the U.S. Patent and Trademark Office (USPTO) until you get your registration. (You can see the current USPTO processing times here.)

So what are the trademark registration steps? And where might you get off track?

Trademark Registration Step 1: Search for similar trademarks

The first step you must go through is to search to make sure there aren’t any similar trademarks out there.

Trademarks are all about consumer protection. They are designed to make sure that consumers aren’t confused about who is providing them the product or service.

So you’ll need to search both the web and the USPTO database. (Here are detailed instructions on how to do a detailed trademark search or if you’d rather hand it off, here’s how you can hire me to research it for you.)

When you do this search you aren’t looking for exact matches.

You have to cast a wider net because things that look or sound similar can confuse consumers. This means I couldn’t go out and register Macdonald’s because it’s too much like McDonald’s.

It’s in your best interest to conduct a thorough search. This is because if the USPTO finds something they could deny your registration. And then you’ll lose all the money that you spent on your application.

If you don’t find any similar trademarks, then you are free to move on to Step 2.

And if you do find a similar trademark, you might want to start thinking about a brand so you don’t get a cease and desist letter.

(As a bonus, if you love research, then this is the one step I endorse DIY-ing!)

Trademark Registration Step 2: Prepare and file your application with the USPTO

Trademarks are registered country by country. In the United States, the USPTO oversees trademark registrations.

So in this Step, you’ll prepare and file your trademark with the USPTO.

You’ll also be providing the USPTO with proof of how you are currently using your trademark. This proof is called a specimen. Specimens are used by the USPTO to verify that consumers will associate your business as the provider of the product or service.

Once you’ve filed your trademark the waiting game of Step 3 begins.

Trademark Registration Step 3: Review your application by the USPTO

Several months after you submit your application, you’ll be given an attorney at the USPTO. This attorney will review your application.

At the end of his review, he will do one of two things:

• ask questions and request clarifications about your application (called an Office Action)
• give you the thumbs up to move to Step 4

Office Actions are most commonly issued because he thinks your trademark is:

• describing your product or service
• too similar to another trademark registered with the USPTO
• descriptive of a geographic location
• your name or sounds like a name
• not functioning as a trademark

If he sends you an Office Action, you’ll have six months to respond to all his questions and concerns.

If you fail to respond within the six-month window, your application will automatically expire. This means you’ll have to start back at Step 1 if you still want your trademark.

If you respond, he’ll have a couple of months to review your response. After this review, he will either allow you to move to Step 4 or repeat the process with more questions.

A recent study showed that 65% of USPTO applications receive an Office Action.

So this back-and-forth dance with the USPTO attorney will happen with most applications. And while some Office Actions are easy to correct, others are more challenging. (Another reason why it’s good to check in with an attorney before you submit your application.)

If you get approval from your USPTO attorney, then you get to move on to Step 4.

Trademark Registration Step 4: Review your trademark by the public

Step 4 starts with your USPTO attorney giving you a publication date. This is the date that your trademark will be published in the Official Gazette.

For 30 days after this date, anyone who thinks your trademark would impact his/her trademark can oppose your registration.

If no one comes forward within this window, then you’ll automatically move on to Step 5.

Trademark Registration Step 5: You’ve got a registered trademark!

If no one comes forward in Step 4, you’ll automatically get your trademark.

And about three months later, you’ll get a digital trademark registration certificate via email.

Once you have a registered trademark, you can use the ® symbol after your trademark. You’ll also need to renew your trademark and stop anyone from using a similar trademark.

And that’s it! You now know the five trademark registration steps.

While this process isn’t difficult, there are several places where things can get off track. And that’s why it’s often nice for you to have someone holding your hand as you navigate the process.