Caveat for this content: I am NOT an attorney, nor do I offer this as legal advice. Please consult with a professional trademark or business attorney with expertise in trademark and patent filings with the USPTO. The purpose of this article is to provide you a foundation of expectations of what you’ll need to think about and do if you want to move forward with registering a trademark or service mark in your solopreneur business.

An important beginner story

Because I was so creative and inventing things all of the time, I was also “trademark happy” with my creations. The first trademark, or “TM” symbol I ever used was for my company, PappyCards (Isn’t it funny how close that is to “PappyClub?” That’s where creativity takes you when you have such a cool last name). PappyCards was a greeting card company I started after quitting my first job after college. I’d graduated from the Art Institute of Pittsburgh in 1982 and got a job as a typographer for a small mom-and-pop outfit. I worked my butt off for a mediocre hourly rate 70-80 hours a week (yes, I had no life), and was able to save up about eight thousand bucks over three years. I dreamed of having my own creative business, and so with my eight thousand in the bank, I quit with a big vision of being a creative entrepreneur. That was my very first business venture. I put a TM after the word PappyCards and added more TM’s with every new greeting card “line” that I came up with—Lifters, Endearments, Country Cats—you name it. When I would come up with a new line of cards, I would brand them and proudly add that official TM on the end of the brand.

In the mid 80s, the greeting card mothership, Hallmark, decided that there were too many independent greeting card lines infiltrating their stores and taking up valuable rack space they wanted Hallmark cards to have. They decided to offer their retailers 70% off of their fixtures and signage if they only sold Hallmark, and branded those exclusively Hallmark products stores as a “Hallmark Gold Crown” stores. Yup. That’s where the gold crown came from. A smart positioning move for the company that impacted nearly 80% of the stores that carried my cards. Suddenly, I was having to compete with hundreds of other independent greeting card companies like Carlson, American Greetings and Blue Mountain Arts who were in the same boat as I was, but had many more resources and independent reps (that’s how card lines got sold I found out) to fight for the remaining retailers who sold cards. It’s also when we started seeing “spinners” (what we call those card racks that spin in the stores) in some of the oddest retail places. Independents were fighting for cash registers to ring, and would sell their cards anywhere—car washes, medical centers, bakeries, it was really something to see as that industry shifted all because Hallmark wanted to remain dominant. After all, they are responsible for commercializing the greeting card industry and are the oldest greeting card company in the US, founded in 1910.

Needless to say, I had to shutter my doors after a few years battling the other independents and even though I’d won a few awards for my card designs, it didn’t matter when it came to the retail sale. In addition, I couldn’t sell enough cards to survive given the retail keystone rate, which means if your card retails for $1.50, they’ll only pay .75¢ for each card. That’s pretty easy math, even for me, and it’s also not a lot of bologna sandwiches.

Because of my struggle to compete and create a sales machine that could generate enough income to pay the printing bills (many times I was hand-coloring my cards because it was cheaper to print one color instead of four color. Oh, what I did to get by.), I never got to officially register any of the trademarks I was claiming with my little added TM. PappyCards folded four years later and I reluctantly went back into the workforce.

I share this story because I want you to think about why you are registering a mark before you invest in an attorney and the registration fees. Not that it’s a huge investment, depending on what your attorney’s fees are, but if you are registering several marks, it can add up. Make sure you have a strategy, it’s tied into your brand and that you are seriously committed to the product or service that you are registering.

What you need to think about before you register

Before I go into the steps of registering your trademark to protect it from infringement, it’s important to think about the reason why you want to register. For me, because I was so creative, I was always coming up with some system, product, service, video series—you name it—and wanting to trademark what I named it. I’ve been so fickle in my entrepreneurial business that things I created years ago that I would have spent the money and time to register I don’t even use anymore. They had a short lifespan because I moved onto something else. I’m glad I didn’t move forward with registering them as that would have been wasteful as they didn’t have long shelf life in my business.

So when you’re thinking of registering a product or service, think about the longevity of your investment. Whether it’s a product or service, make sure it’s something that will have a long shelf life. Research what other similar solopreneurs or business owners who you aspire to are doing. Are they using trademarks? Service marks? If so, how? Is their business name registered? Are they just posting a TM or SM after their product or service without ever filing?

Research the word or phrase you are considering registering. Visit the United States Patent and Trademark Office’s website Trademark Electronic Search System (TESS) here: http://tmsearch.uspto.gov/. The USPTO has a lot of great information on registering your trademark or service mark here: https://www.uspto.gov/trademarks-getting-started/trademark-basics.

The next step is to retain a copyright and/or trademark/patent attorney. Your business attorney may have experience with filing, however, for complex or competitive brands, it may be wise to find an attorney who specializes in patents and trademarks. As far as fees, I paid the USPTO $275 in 2020 to register PAPPYCLUB. Your attorney fees will vary, so get an estimate first.

TM, (R) and SM - What’s the difference?

A TM represents an unregistered, unprotected trademark. By using this mark, you are letting people know that you have filed for protection with the USPTO.
A ® represents a registered trademark or service mark filed with the USPTO.
A SM (service mark) is similar to a trademark in that it is an unregistered and unprotected mark, but is in reference to a service, not a product. This can be challenging to distinguish, especially when your product is both a good and a service. In that case, it is most common to defer to a trademark, but check with your attorney.

The USPTO registration process

A screenshot of my record in TESS of my PAPPYCLUB filing.

The process of registering your trade or service mark takes time. The USPTO has created a very informative timeline with explanations here: https://www.uspto.gov/trademark/trademark-timelines/section-1b-timeline-application-based-intent-use. On average, you can expect it to take approximately three months after submitting the initial application before an examiner even gets started processing your mark, and up to eight to ten months or longer to complete your registration. Stereotypical government, but if you think about the amount of people requesting registrations every day, the research involved, the paperwork, processing, etc., it’s a bit more understandable why it takes time. And remember, it’s not just service and trademarks. It’s patents, too, which can be very complex and takes two years or more to process.

While you’re waiting on your final Certificate of Registration of your mark from the USPTO, you should place a superscript TM (™) to the name, phrase or whatever it is you are registering. Only until you receive the final Certificate of Registration can you replace the TM with a ®.

Update your communications

After you file, make sure all of your instances of your mark have a superscript TM or SM in the upper right corner after the graphic or word/phrase. Once the USPTO Certificate or Registration is received, swap out the TM for the ®. Note that in copy usage, the first occurrence of your trademark in running copy should reflect the ®. Every instance thereafter on that piece of collateral, such as a brochure, press release or web page, does not need to have the ®. You should also note in the footer of your website that it is a registered trademark or service mark of your company, or the filing entity. For graphic logos of the mark, you can incorporate and always show the ® as it becomes part of the entity. There are some exceptions to this, every brand is different. Very commonly known brands such as Nike, Sony, Adobe, Amazon, etc. often opt to remove the ® to purify their logo mark but state in their disclaimers on their website that they are officially registered marks of a specific entity and are protected.

Once again, please use an attorney when registering any marks. In the event that another entity or business is infringing on your mark or claiming rights to your mark, you can activate your attorney to submit a cease and desist or appropriate notification so your mark remains protected from infringement.

Solicitation from unknown party based on my application filing.

Note on scammers

Have you had the experience where you get a new mortgage or refinance your current home how your mailbox is inundated with urgent offers to buy mortgage protection service? Oh yeah, since mortgages are public record, the scammers jump on your new situation by pushing their insurance policies on you. Well, guess what. Because your application for a trademark or service mark is a public record, you will also get pitches from trademark publishing companies. Run these scams by your attorney, but in most cases, they’re trying to convince you that there’s more to do than what you’re doing through your attorney and the USPTO.

I got this one a few weeks after my attorney filed my application with the USPTO. Look at the cost! And I don’t even know what the heck the company or service is. Beware of these types of scams and new solicitations you get as a result of filing your registration.

You can go here to double check the scammers: https://www.uspto.gov/trademarks-getting-started/caution-misleading-notices.

Update

I received a notification about six months after the initial filing that I achieved a, “Official USPTO Notice of Allowance: U.S. Trademark SN 90022317: PAPPYCLUB (Stylized/Design)” and next steps were to confirm the product that the registered trademark category represented. In other words, I needed to send them .jpg screen shots of the PappyClub membership site. Not a problem!

Registering a Trademark: When and How