If you own and operate a business in Oregon and you’re considering registering a trademark, it’s vital to know a bit about the process and legality of securing your Oregon trademark. Although it’s not exactly an easy process, when you’re looking for the protection and peace of mind it provides, then it is well worth the effort to do so.

What Exactly Is a Trademark?

If you’re able to recall various product names, business names, logos, labels, symbols, designs, product packaging, or other specifics related to a business, then you’re thinking of something that they have trademarked. It is a way that you can distinguish yourself amongst all the competition.

The United States Patent and Trademark Office (USPTO) identifies a trademark as a “word, phrase, symbol, design, or a combination of these things that identifies your goods or services.” This can be extremely important for an operational (or in the process of becoming operational) business, as it sets you apart and protects the goods or services that you are looking to provide. When you’re designing or deciding upon a trademark, you’ll have more success legally registering it if it’s distinct, unique, and stylized to stand out.

Where Do I Start?

A good first step is to familiarize yourself with the USPTO website and take a look through some of the manuals and guides they offer. It’s true that there is a lot of legal jargon, and this is why it can be advantageous for you to collaborate with legal counsel, such as Berkeley Law & Technology Group, for your trademark. A professional is equipped to guide you through the process and help you file the trademark application.

Even before connecting with someone who can be by your side during the application process, you can start by conducting a trademark search to make sure that your trademark isn’t already registered. To do this, you can search through the Trademark Electronic Search System (TESS) to see if what you have in mind is already trademarked by another business. Afterward, you can start to review the application process online with the Trademark Electronic Application System (TEAS).

What Information Will be Needed on My Application?

There is necessary information that you will need to submit with your application, the number one being information about you, the business owner.

1. Owner of the trademark

This will be your corporate or LLC name. You will also need to include your contact information in the form of—at the very least—a physical mailing address. You may also choose to provide additional contact information, such as an email address and phone number.

2. The type of mark you’re proposing

There are three main trademark formats, and you have to specify one of the following:

1. Standard character. This format will allow you to register letters, words, and numbers (or a combination of them) without any specialized stylistic elements. This will make it so you can use your trademark in any design format or in any style.
2. Special character. If there is something a bit more stylized that you want to protect, then this is the format you’ll want to select. For instance, Coca-Cola’s font or Nike’s swoosh.
3. Sound. There are sounds that represent your goods or service. Think of the lion roaring when you start an MGM movie or even the chiming notes of the National Broadcasting Company (NBC).

3. Representation of trademark

The application will ask for any art, drawings, or relative specimens that relate to your mark.

4. Trademark’s relationship to business

You will need to specify the relationship between your mark and the product or service that you’re looking to trademark. There has to be an acute and exact established relationship between the two, as you won’t be able to remedy or add any changes later.

Your application will also need to detail the actual goods and services that you’re intending to trademark. There is a link on the USPTO’s website that outlines these identifications. Visit their Trademark Manual of Acceptable Identification of Goods and Services to learn more. There might already be an entry that accurately describes your good or service, but if there isn’t, it’s best to use your own words to do so.

Which Filing Basis Should I Use?

There are several choices you will need to choose from when filling out the application:

• Commerce (Section 1 (a)). This is relevant if you are already using the mark in your day-to-day business practice. This can be in-state, across state lines, or even internationally.
• Intent to Use (Section 1 (b)). This will be what you choose if you’re planning to use a trademark in the next few years. The trademark should be used before filing in order to have it approved for registration.
• Foreign Application That Already Exists (Section 44 (d)). This is what you will use if you’re attempting to register a US trademark application based on a foreign trademark application, and it needs to be filed within six months of the foreign application.
• Foreign Registration That Already Exists (Section 44 (e)). This will be what you choose if the trademark registration already exists in a foreign treaty country. All the related information must be provided when filing for the US version.

Filing Fees and Waiting for Approval

The current filing fees can range from anywhere between $250 to $350 per series of goods or services. The USPTO will have its current fees updated online.

Once all the forms and fees have been filed, your application will be assigned to an attorney who will review it. This generally takes place in a three-month window, but due to current backlog, it is now taking 8 to 10 months. If there are any issues, you will be contacted, and any issues will need to be remedied before the application can continue to be processed.

If you are looking to have a trademark for your Oregon business, don’t hesitate to reach out to the Berkeley Law & Technology Group to support you in the filing of your application.