Founder's Guide to U.S. Trademarks: What You Need to Know Before You File

As a corporate attorney working with startups, one of the most common questions I hear is: "When should we trademark our name?" The answer is usually: earlier than you think. Your brand is one of your most valuable assets, and protecting it properly from day one can save you significant headaches (and legal fees) down the road.

Let's walk through everything you need to know about U.S. trademarks, from what qualifies for protection to navigating the opposition process.

What Is a Trademark, Really?

A trademark is any word, phrase, symbol, design, or combination thereof that identifies and distinguishes the source of goods or services. Think of it as your brand's legal signature—it tells customers "this product comes from us, not someone else."

In the U.S., trademark rights can arise from either use in commerce or federal registration with the United States Patent and Trademark Office (USPTO). While you gain some common law rights simply by using a mark, federal registration provides significantly stronger protection, including:

• Nationwide priority (even in markets where you haven't yet operated)

• Legal presumption of ownership and validity

• The ability to use the ® symbol

• Federal court jurisdiction for enforcement

• A basis for international registration

What Can You Trademark? (And What Can't You?)

Trademarkable Material

Strong candidates for trademark protection include:

• Fanciful marks: Completely invented words with no dictionary meaning (e.g., Kodak, Xerox)

• Arbitrary marks: Real words used in unrelated contexts (e.g., Apple for computers, Amazon for retail)

• Suggestive marks: Terms that hint at qualities but require imagination (e.g., Netflix, Copilot)

• Logos and designs: Unique visual identifiers for your brand

• Slogans: Distinctive phrases associated with your products (e.g., "Just Do It")

• Product configurations: Unique shapes or packaging (trade dress)

• Sounds and colors: In rare cases where they've acquired distinctiveness

The strength spectrum matters: Fanciful and arbitrary marks receive the strongest protection, while suggestive marks require more proof of distinctiveness. Descriptive marks are the weakest and require significant evidence of "secondary meaning" (consumer association with your brand).

What You Cannot Trademark

The USPTO will reject applications for marks that are:

• Merely descriptive: Directly describe the product or service (e.g., "Fast Delivery Service" for a courier company)

• Generic terms: Common names for products or services (e.g., "Computer" for computers)

• Geographically descriptive: Simply name a place associated with the goods without acquired distinctiveness

• Surnames: Family names without evidence they've become distinctive

• Confusingly similar: Too close to existing registered marks in related industries

• Immoral, deceptive, or scandalous: Offensive content (though this standard has narrowed after recent Supreme Court decisions)

• Government symbols: Flags, seals, or insignias

• Functional features: Elements necessary for the product to work or affect its cost/quality

Pro tip for startups: Before you fall in love with a name, do a comprehensive trademark search. I've seen too many companies build their entire brand only to receive a cease-and-desist letter months later. Invest in a professional search early—it's far cheaper than rebranding.

Understanding Trademark Classes

The USPTO organizes goods and services into 45 international classes based on the Nice Classification system:

• Classes 1-34: Goods (physical products)

• Classes 35-45: Services

Common classes for startups:

• Class 9: Software, mobile apps, downloadable digital content

• Class 35: Advertising, business management, online retail services

• Class 36: Financial services, cryptocurrency, investment platforms

• Class 38: Telecommunications, streaming services

• Class 41: Education, entertainment services

• Class 42: Software as a Service (SaaS), technology services

Why Classes Matter

You must register your trademark in each class where you offer (or intend to offer) goods or services. This has several practical implications:

1. Cost: USPTO filing fees are per class (currently $250-$350 per class)

2. Scope of protection: Registration in Class 9 (software) doesn't protect you in Class 25 (clothing)

3. Strategic planning: File in classes you'll use within 3-4 years, not just wishful thinking

Startup strategy: Start with the classes central to your core business. You can always file additional applications as you expand. Many startups initially file in Class 9 (software) and Class 42 (SaaS), then add others as they grow.

The Trademark Registration Process

Here's what to expect when filing with the USPTO:

Step 1: Comprehensive Search

Before filing, conduct a thorough search of the USPTO database, state registrations, common law uses, and domain names. Don't rely solely on Google.

Step 2: Application Filing

File a TEAS (Trademark Electronic Application System) application, choosing between:

• TEAS Plus ($250/class): Lower cost but stricter requirements

• TEAS Standard ($350/class): More flexibility in descriptions

You'll need to specify:

• The exact mark

• The filing basis (use in commerce or intent to use)

• The goods/services and their classes

• A specimen showing actual use (if already using the mark)

Step 3: USPTO Examination (3-4 months)

A trademark examining attorney reviews your application for compliance and conflicts. Expect an "Office Action" if there are issues—about 40% of applications receive at least one.

Step 4: Publication for Opposition (30 days)

If approved, your mark is published in the Official Gazette, giving third parties 30 days to oppose registration.

Step 5: Registration (approximately 3 months after publication)

If no opposition is filed (or you successfully defeat one), you'll receive your registration certificate.

Total timeline: 8-12 months for a smooth application, longer if complications arise.

Navigating the Opposition Process

This is where many startups panic—but don't. An opposition isn't a lawsuit, and many can be resolved through negotiation.

What Is an Opposition?

An opposition is a proceeding before the Trademark Trial and Appeal Board (TTAB) where a third party challenges your right to register your mark. Common grounds include:

• Likelihood of confusion with the opposer's mark

• Dilution of a famous mark

• Descriptiveness or genericness

• Prior use rights

Responding to an Opposition: Your Options

1. Evaluate the opposition carefully

Not all oppositions have merit. Review:

• Does the opposer actually have superior rights?

• Are the goods/services actually related?

• Is their mark genuinely similar?

• Have they actively used their mark?

2. Consider settlement negotiations

Most oppositions settle before trial. Options include:

• Coexistence agreement: Both parties agree to use their marks in defined channels/territories

• Narrowing your identification: Limit your goods/services to avoid overlap

• Consent agreement: The opposer withdraws opposition in exchange for conditions

• Amendment: Modify your mark slightly to reduce confusion

3. File an answer (required within 40 days)

Even if you plan to settle, you must file an answer admitting or denying the allegations. Missing this deadline results in default judgment against you.

4. Engage in discovery

If settlement fails, the case proceeds like litigation with interrogatories, document requests, and depositions. This is expensive—budget $20,000-$50,000+ for a fully litigated opposition.

5. Consider suspension for negotiations

The TTAB often grants suspensions (typically 60-180 days) to allow settlement discussions. Use this time wisely.

Best Practices When Facing Opposition

Stay calm and strategic: An opposition doesn't mean you've done anything wrong. It's a business decision by the opposer to protect their interests.

Respond promptly: The TTAB has strict deadlines. Missing them can cost you your application.

Assess the economics: Sometimes withdrawing and rebranding is cheaper than fighting, especially if the opposition has merit. Run the numbers.

Document everything: Gather evidence of your use, development timeline, and market differentiation. This proves invaluable in negotiations or trial.

Be realistic about costs: Opposition proceedings aren't cheap. Factor in attorney fees, potential settlement payments, and the opportunity cost of your time.

Explore creative solutions: I've negotiated agreements where clients differentiated their visual branding, modified their taglines, or agreed to stay out of specific market segments—allowing both parties to coexist peacefully.

Proactive Strategies to Avoid Oppositions

Prevention is worth a pound of cure:

• Conduct thorough clearance searches: Don't rely solely on USPTO searches. Check common law uses, social media, domain registrations, and industry directories.

• Choose distinctive marks: The more unique your mark, the less likely it conflicts with others. Fanciful or arbitrary marks rarely face opposition.

• Monitor for potential conflicts: Use trademark watch services to track similar applications. It's easier to address concerns early through a courtesy letter than after a brand is established.

• File early: Priority matters. The first to file (or use in commerce) generally wins.

• Keep evidence of use: Document when and how you first used your mark. Screenshots, invoices, advertising materials—all of this matters if your rights are challenged.

Maintaining Your Trademark

Registration isn't the end of the journey:

• Use it or lose it: Maintain continuous use of your mark. Abandonment can occur after 3+ years of non-use.

• File maintenance documents:

  • Declaration of Use: Between years 5-6

  • Combined Declaration and Renewal: Between years 9-10, then every 10 years

• Monitor for infringement: Registration gives you rights, but you must enforce them. Consider trademark monitoring services.

• Use the ® symbol: Once registered, use it consistently to put others on notice.

Final Thoughts: Trademark Strategy for Startups

As a startup founder, your instinct might be to defer trademark registration until you're "bigger" or "profitable." I urge you to reconsider. Here's why:

1. First to file wins: Trademark priority is established by filing date (or use date). Waiting allows others to claim your brand.

2. Investor expectations: Savvy investors check whether you've protected your IP. A registered trademark signals professionalism and foresight.

3. Easier enforcement: Cease-and-desist letters carry much more weight with a registration certificate attached.

4. Growing costs of rebranding: The longer you wait, the more expensive it becomes to change course if conflicts arise.

Think of trademark registration as insurance for your brand. It's a relatively modest investment—typically $1,500-$3,000 per class with attorney assistance—that protects one of your most valuable assets.

Have questions about protecting your startup's brand? Let's talk. Every business is unique, and a personalized trademark strategy can save you significant time and resources as you scale.

This blog post provides general information and does not constitute legal advice. Trademark law is complex and fact-specific. Consult with a qualified trademark attorney for guidance on your particular situation.