Trademarking: It Sounds Simple. It Is Not. And That Is Okay

Feb 23

By: Owner & Attorney, Michael Jonas, JD, MBA

If you have ever said
“I just want to trademark my name”
or
“Isn’t it just filling out a form?”

You are not alone.

Trademarking sounds simple because people talk about it simply. In reality, it is a layered legal process that mixes timing research strategy and risk tolerance. It is absolutely learnable but it is rarely as straightforward as the internet makes it seem.

Let’s walk through what trademarking actually involves.

What a Trademark Actually Is

A trademark protects brand identifiers that help customers know who they are buying from. This can include business names, product names, logos, and slogans.

Trademark law is not about ownership in the abstract. It is about consumer confusion. The core question is whether someone else’s use of a similar name could cause people to think your businesses are connected when they are not.

That framing explains almost every rule that follows.

Common Law Trademarks Rights Without Registration

In the United States trademark rights can exist without filing anything. These are called common law trademarks and they arise simply through use in commerce.

However common law rights are limited to the geographic area where you actually operate, are difficult to prove, expensive to enforce, and invisible to most name searches.

If you operate locally, your protection is local. That is why multiple businesses can legally share a name in different regions until one of them files federally.

State Trademarks and Why Cannabis Uses Them

Some states allow state level trademark registration which offers protection only within that state. State trademarks are often used when a business operates only in one state federal trademarking is not yet possible or the industry is not federally legal.

This is especially common for cannabis businesses. Because marijuana is still illegal at the federal level, many cannabis brands cannot federally trademark THC related goods and instead rely on state trademarks as a partial protection strategy. It establishes their brand in the ways they can utilize at this time.

State trademarks can be useful but they do not replace federal protection.

Federal Trademarks Are What People Usually Mean

When people talk about trademarking they usually mean federal registration through the United States Patent and Trademark Office.

A federal trademark can provide all of the following: nationwide priority, public notice of your rights, stronger enforcement tools, access to federal courts, and meaningful deterrence against similar names.

But registration is not automatic and the process has multiple stages.

Step 1: Trademark Searching Is More Than Typing a Name

This is where most DIY efforts fall apart.

A proper trademark search is not just typing the exact name into the USPTO database and seeing if it shows up. That’s the bare minimum and it misses most of the real risk.

A real search looks at similar spellings, phonetic equivalents (words that sound alike), word order changes, plural or singular versions, related goods or services, and overlapping or closely related industries.

For example even if Blue Narwhal Consulting is not listed Blu Narwhal Advisors could still be a problem depending on the services offered.

Trademark law cares about likelihood of confusion, not identical matches.

This is also where having a lawyer helps in a practical way. We don’t just search like a business owner, we search like a USPTO examining attorney. We’re trained to spot the kinds of conflicts an examiner is likely to flag, and to think through how the office will analyze similarity, relatedness of services, and consumer confusion.

That’s why something can look “available” at first glance and still be legally risky and why a professional search and analysis can save you from expensive rebrands, disputes, or rejected applications later.

Step 2: Choosing a Filing Basis (Currently In Use Versus Intent to Use)

There are two main ways to file a federal trademark application.

Currently In Use means you are already using the mark in commerce. This requires submitting proof such as a live website offering services product packaging or labels or a checkout or sales page. The use must be real, not just a placeholder.

Intent to Use is for names you plan to use but are not using yet. This allows you to reserve priority while you prepare to launch. Later you must submit proof of use before the trademark fully registers.

Skipping this step and launching first is one of the most common and costly mistakes.

Step 3: Classes and Class Descriptions

Trademarks are registered in classes which define what goods or services your mark covers. There are 45 total classes. Classes 1 through 34 cover goods. Classes 35 through 45 cover services.

You do not trademark a name in general. You trademark it for specific activities.

Each class requires a description and the wording matters. Too narrow and your protection is thin. Too broad and the application may be rejected.

More classes mean more filing fees and more complexity.

Step 4: Application Preparation and Filing

Once a search is completed and filing basis and classes are selected, then the application is prepared and filed.

This step includes owner information, the mark itself, the filing basis, class selection, class descriptions, and specimens if filing as in use.

Errors here can delay the process or create long term problems.

Step 5: USPTO Review and Office Actions

After filing the application is reviewed by a USPTO examining attorney.

Sometimes it moves forward smoothly. Often it does not.

If the examiner finds issues they issue an office action. Common reasons include likelihood of confusion, descriptiveness, improper specimens, or class or description issues.

Office actions are legal responses not simple corrections. How they are handled can determine whether the application survives.

Step 6: Publication for Opposition

If the application passes examination it is published for opposition.

This is a public notice period where third parties can object if they believe your trademark would harm their existing rights.

Most applications are not opposed, but when they are it can become a formal dispute.

Step 7: Registration or Notice of Allowance

What happens next depends on how you filed.

If filed as currently in use, the mark moves toward registration.
If filed as intent to use, the USPTO issues a Notice of Allowance. This means you still need to submit proof of use before registration is finalized.

Only after this step do you receive a full federal registration.

Why Trademarking Is Worth It

Trademark registration supports licensing and partnership opportunities, strengthens your position in disputes, allows courts to issue injunctions, creates public notice of your rights, and deters others during name searches.

Most trademark conflicts never reach court because a registration makes the risk obvious early. That deterrence alone is often worth the investment.