How to Register a Trademark in New York (2024 Guide)

If you want to start an LLC in New York, trademarks are necessary when it comes to forming it. A trademark is a symbol, word, phrase, logo, or design that identifies and distinguishes the source of goods or services of one party from those of others. Registering a trademark is essential in protecting your brand and ensuring that your LLC stands out in the marketplace. This article will provide a step-by-step guide on Registering a Trademark in New York and discuss the importance of trademark protection for your business.

Webinarcare Editorial Team will help you register your trademark. You must be guided by all the factors gathered in this article.

How to Register a Trademark in New York

On this page, you’ll learn about the following:

What is a Trademark?
Steps on How to Register a Trademark in New York
The Importance of Trademark Registration
How Long Does It Take to Register a Trademark?
FAQs

What is a Trademark?

A trademark is a distinctive symbol, logo, word, phrase, or design that identifies and distinguishes the source of goods or services of one business entity, such as a Limited Liability Company (LLC), from those of others. This vital business asset represents the reputation, quality, and brand value of a company in the competitive marketplace. Registering a trademark at the state level grants the owner exclusive rights to use the mark within the state’s jurisdiction and offers legal protection against infringement.

An example of a trademark is the iconic “Nike Swoosh” logo, which is a recognizable symbol representing the Nike Inc. brand. The swoosh, created in 1971 by graphic designer Carolyn Davidson, has since become synonymous with athletic footwear, apparel, and equipment sold by the company globally. Over time, the logo has acquired significant brand recognition and value. As a trademark, the Nike Swoosh legally protects the company from competitors attempting to use similar designs, ensuring the uniqueness and authenticity of Nike products in the market.

We reviewed some of the Best Trademark Services in New York with their top features, ratings, and prices for you to check out.

LLC Service	Rating & Price	Top Features	Learn More
#1 Recommendation	5/5 $599 + Federal Fee	Trademark Search Trademark Registration Trademark monitoring	Learn More
	4/5 $239.99/year	Single Subscription Trademark Registration Attorney service for Trademark	Learn More

It is better to understand how trademark works. However, it is still suggested that you speak with a legal professional before you begin registering your trademark after starting an LLC in New York.
– WEBINARCARE EDITORIAL TEAM

Steps on How to Register a Trademark in New York

Registering a trademark is important in protecting your brand identity and preventing others from using it without your permission. Here are the steps to follow when registering a trademark:

Step 1: Conduct a Trademark Search

Before you invest time and resources in registering a trademark, ensuring that your desired mark is unique and does not infringe on existing trademarks is essential when starting a business in New York.

Your trademark should be distinctive and distinct from other trademarks in the market. It should not be generic or merely descriptive of the goods or services it represents—the more unique your trademark, the stronger its protection will offer. The USPTO maintains a database of registered trademarks and pending trademark applications called the Trademark Electronic Search System (TESS). Conduct a thorough search of TESS to determine if any existing trademarks could conflict with your desired mark.

In addition to the USPTO database, checking your state’s trademark database is essential. Visit the New York Trademark Search to access New York trademark database and search for potential conflicts.

Step 2: Choose the Appropriate Trademark Class

Trademarks are categorized into different classes based on the type of goods or services they represent. The United States and most other countries use the Nice Classification system, which divides trademarks into 45 classes.

Registering your trademark requires identifying the class or classes that best represent your product or service. Remember that if your business, offers multiple goods or services spanning different classes, you may need to register your trademark in each relevant class.

Step 3: Prepare and File a Trademark Application

Once you have conducted a thorough trademark search and identified the appropriate class or classes for your trademark, you can proceed with the trademark application process in New York.

Gather Required Information and Documentation

Prepare the necessary information and documentation for your New York trademark application, including:

A clear representation of your trademark (e.g., a drawing, logo, or stylized text)
A detailed description of the goods or services your trademark represents
The date of first use of the trademark in commerce (if applicable)
Poof of use of the trademark in commerce (if applicable), such as product packaging, labels, or marketing materials

File a Trademark Application with the USPTO

To register your trademark at the federal level in New York, you must submit a trademark application to the USPTO. The application can be filed online using the Trademark Electronic Application System (TEAS), which offers three different application forms with varying requirements.

Choose the form that best suits your needs and complete the required information, including:

A description of your trademark and the goods or services it represents
A clear image or drawing of your trademark, if applicable
The appropriate filing fee

For federal registration with the USPTO, the fees depend on the application form and the number of classes you are registering your trademark. Once your application is submitted, the USPTO will review it and may request additional information or clarification. Respond promptly to any requests to avoid delays in the registration process.

File New York Trademark Application

To register your trademark at the state level, you must file a separate application with the New York Secretary of State. In New York, the state trademark application fee costs around $26.

Recommended: In protecting your brand, you need to register your trademarks. With Legalzoom’s Trademark Registration Service, they will safeguard your brand, fortify your market position, and ascend the ladder of business success with confidence and peace of mind. That’s why we recommend –
LegalZoom – $599 + Federal Fees

Step 4: Respond to Office Actions and Opposition

During the trademark registration process, you may encounter challenges in the form of office actions or opposition.

Office Actions

An office action is a formal communication from the USPTO or New York trademark examiner requesting additional information, clarification, or changes to your trademark application. If you receive an office action, you must respond within the specified time frame (usually six months for USPTO office actions) to avoid abandoning your application. Consider consulting a trademark attorney or agent to help you respond effectively to office actions.

Oppositions

After your trademark application is approved by the USPTO or New York trademark examiner, it will be published in the Official Gazette or a similar publication for a period of public opposition. During this time, third parties may file an opposition against your trademark application if they believe it conflicts with their existing trademark rights. If an opposition is filed, you may need to defend your trademark before the Trademark Trial and Appeal Board (TTAB) or a similar state-level body. It’s advisable to seek legal representation if you face trademark opposition.

Step 5: Finalize the Trademark Registration

Suppose your trademark application passes the opposition period without any challenges. In that case, you will receive a Notice of Allowance (for intent-to-use applications) or a registration certificate (for use-based applications) from the USPTO or New York trademark office.

Statement of Use or Declaration of Use

If you filed an intent-to-use trademark application, you must submit a Statement of Use to the USPTO within six months of receiving the Notice of Allowance. This demonstrates that you are now using your trademark in commerce. You can request extensions of up to five additional six-month periods if you need more time to commence use.

Use the Trademark Electronic Application System (TEAS) SOU form to file an SOU.

Additional Fees

Additional fees may be associated with finalizing your trademark registration, such as submitting a Statement of Use or requesting extensions of time. Review the USPTO or New York trademark office fee schedule and submit any required payments.

Step 6: Maintain and Renew Your Trademark

Once you have successfully registered your trademark, it’s crucial to maintain and renew your registration to ensure ongoing protection. Trademark registrations must be maintained by submitting periodic maintenance documents and fees to the USPTO or New York trademark office. For federal registrations, the first maintenance filing is due between the fifth and sixth year after registration, followed by a second filing between the ninth and tenth year. Subsequent renewals are required every ten years.

Consider seeking professional assistance from New York Business Attorney if you have queries. Be mindful of the deadlines for maintaining and renewing your trademark registration. Please submit the required documents and fees on time to avoid the cancellation of your registration.

The Importance of Trademark Registration

Registering a trademark in New York offers several benefits for your business:

Legal Protection: A registered trademark grants exclusive rights to use the mark for the goods or services specified in the registration. This can help prevent others from using a similar mark that might confuse consumers.
Brand Recognition: Registering a trademark can help establish your brand identity and make it easier for customers to recognize and associate with your goods or services.
Deterrence: Registering your trademark can deter potential infringers, signaling your intent to protect intellectual property rights.
Right to Sue: Registering a trademark gives you the legal standing to bring a lawsuit against infringers in federal or state court.
Nationwide Protection: In the United States, registering a trademark with the United States Patent and Trademark Office (USPTO) provides nationwide protection. Depending on your business needs, you may also register your trademark at the state level.

How Long Does It Take to Register a Trademark?

Depending on the potential issues that may arise, the trademark registration process typically takes between 6 and 12 months. Although some applications are approved in much less time, it is best to expect a longer wait; the USPTO receives hundreds of thousands of trademark applications each year, which increases processing time. In addition, the trademark office may request additional documentation or communication. As a result, applicants should be prepared to provide all requested information as soon as possible to expedite the registration process.

FAQs

How do I register a trademark in New York?

Trademarks in New York are registered with the United States Patent and Trademark Office (USPTO).

What is the benefit of registering a trademark in New York?

Registering a trademark in New York helps to protect your business from others using the same or similar name.

How much does it cost to register a trademark in New York?

The fee for trademark registration with the USPTO is $275 – $325 per class.

Are there any filing requirements for trademarks in New York?

You must submit an application, a description of the goods or services to be registered, and a specimen of how the trademark is being used in commerce.

What is the process of registering a trademark in New York?

The application is submitted, examined by the USPTO, published for opposition, and finally issued in your name.

How long does it take to get a trademark approved in New York?

The average time is about 9-12 months.

Can I trademark my personal name in New York?

Yes, your personal name can be trademarked in New York as long as it is not too common or too similar to other registered trademarks.

Can I change my trademark after it is registered in New York?

Yes, you can amend your trademark at any time during the registration process.

Do trademarks expire in New York?

Trademarks last for 10 years and can be renewed for additional 10-year terms.

Is a trademark necessary to start a business in New York?

No, a trademark is not necessary to start a business in New York but it is highly recommended to protect your brand.

Can I register my trademark globally at once through New York?

No, registering for a trademark takes place in each specific country.

Do I need an attorney to register a trademark in New York?

No, but it is recommended to hire a registered trademark attorney for the process. They make sure your paperwork is correct and for more comprehensive legal help.

Can a common phrase be trademarked in New York?

Yes, a common phrase can be trademarked if it is used in a unique or creative context and is not too similar to existing trademarks.

How can I protect my trademark in New York?

You can monitor the marketplace, send cease and desist letters, and seek legal action if necessary.

Can I trademark a product I invented in New York?

You cannot trademark an invented product, but you can file a patent for it.

What if someone already has my same trademark in New York?

You can dispute the registration by filing a petition to cancel.

What is a “specimen” requirement for trademarks in New York?

A specimen is an example of how the trademark is being used in commerce and can be a product label or a promotional brochure.

What is a “class” in terms of trademarks in New York?

A class is a category of goods or services and there are 45 in total.

Can trademarks be cancelled in New York?

Yes, trademarks can be cancelled at any time if they are inactive or violate another company’s rights.

What is used to distinguish a trademark in New York?

The trademark can be composed of any number of words, symbols, or designs that your brand can use.

How much does it cost to renew a trademark in New York?

The fees are subject to change, but typically range from $300-$500 per class of goods or services.

Can I use my registered trademark symbol everywhere?

You can only use the ® symbol in the US for goods and services associated with that registration.

Can I cancel my trademark before its 10-year term ends?

Yes, you can choose to abandon your trademark registration at any time.

Do I have to register my trademark in New York for all 45 classes?

No, you only need to list the specific classes for the goods and services you will use it for.

Can a trademark registration be transferred in New York?

Yes, a trademark registration is inherently transferrable. However, specific requirements must be met.

How do I enforce my trademark rights in New York?

You must monitor and take legal action against infringers, including potentially damages and injunctive relief.

What happens if my trademark application is refused in New York?

You can file an appeal with the Trademark Trial and Appeal Board (TTAB).

Will my registered trademark be nationally recognized in New York?

Yes, your trademark is recognized throughout the United States.

Can a trademark be renewed indefinitely in New York?

As long as you continue to use your mark in commerce and renew the trademark registration every 10 years, your mark can be renewed indefinitely.

Conclusion

Registering a trademark in New York is critical in protecting your brand and establishing a strong market presence. Even a Resident Agent should be familiar with the guidelines for making a trademark for your New York business. Following this guide and staying informed about trademark laws and regulations, you can successfully navigate the registration process and secure your intellectual property rights. With your trademark registration, you can focus on growing your business and building a reputable brand.