5 Things to Know Before Filing a Trademark Application

One of the most potent moves you can make to safeguard your brand is to obtain a trademark. But before you apply to the U.S. Patent and Trademark Office (USPTO), it’s vital to grasp the ins and outs—and the potential hazards—of the process. Here are five essential pieces of knowledge for anyone about to embark on a trademark mission, whether in the name of a new brand or an old one.

1. Not All Names Are Created Equal, Pick the Best Candidate and Weed Out Bad Ones

Select a unique trademark and one that represents your product well, but not generic or too descriptive of your product or services. Trademarks fall into multiple categories of strength, ranging from the most to the least distinctive. At the top are fanciful or arbitrary terms. Fanciful terms are made-up words that have no meaning except as trademarks. Examples include “Kodak” and “Xerox.” Arbitrary terms are real words that have no connection with the trademarked product. Examples include “Apple” for computers or “Amazon” for online selling. At the bottom of the hierarchy are descriptive marks and generic terms.

Suggestions:

• Steer clear of words denoting places or family names.
• Get trademark counsel to evaluate how strong your proposed trademark is.
• If you are going to use a descriptive term, determine if you have or can obtain “secondary meaning.”

2. Conduct a Comprehensive Trademark Search

Head Off Disputes Before They Start

Even if a name isn’t federally registered, it may still be protected. A lot of trademark conflicts bubble up from common law or state rights. You’re safest with a name when disputes of any sort are unlikely.

Optimal approaches:

• Use the USPTO’s TESS database to do a knockout search.
• Have experienced trademark counsel perform a full clearance search that checks domains, state registries, and social media.

Conducting a trademark search properly is one of the most important and first steps in starting a business, launching a product or service. Why is this so critical? When done properly, you can avoid or at least minimize the potential risk of:

1. a future trademark rejection from the Examiner at the USPTO several months after filing. Often you may have already launched or invested heavily into the product/service or marketing making it hard or impossible to pivot to a new name.
2. Potential cease and desist or lawsuit from a superior trademark rights holder.
3. Potential TTAB Opposition or Cancellation proceeding from superior trademark rights holder whether or not the rights holder has a federal trademark filed for the same.

Searching and clearance of the trademark is crucial BEFORE starting, if done correctly and can be done efficient without too much expense.

3. Know the Classes of Goods and Services

Choose the Right Trademark Class. The U.S. Patent and Trademark Office employs an international classification system that groups products and services into 45 classes. If you select the wrong class, you could receive a refusal or have limited protection.

Main Points to Remember:

• File only in those classes where you currently use the mark or plan to use it.
• Your filing fees go up when you file in more than one class.
• Make clear, concise, and legally safe descriptions of your goods/services.

4. Understand the Basis for Filing

Use-based applications (1A Basis) are for marks already in use in commerce. The filer must provide a specimen showing how the mark is used in connection with the goods or services listed in the application. An intent-to-use application (1B Basis) is for a mark not yet in use but for which the applicant has a bona fide intention to use the mark in commerce. The application must also list the goods and services with which the mark will be used. The filer must have a clear and present intention to use the mark.

• Section 1(a) (Use in Commerce): You are presently using the mark in your business operations.
• Section 1(b) (Intent to Use): You intend to start using the mark shortly.

A filing based on an Intent-to-Use (ITU) means you must file a separate document called a Statement of Use later on to finish the registration process. The ability to file Section 1(b) application is great for start-ups because they are typical not ready to launch the product/service but can “lock-in” the trademark immediately.

5. Mistakes Can Be Costly—Seek Legal Guidance

Taking a DIY Stance Doesn’t Always Pay Off And Can Be Fatal

Although it may seem straightforward, the law of trademarks is intricate and nuanced. Errors such as picking the incorrect class, being imprecise in descriptions, or not grasping the confusion that is likely to happen can slow down registration of your mark or even bring it to a dead stop, or later lead to a multi-million dollar hit when the mistake becomes apparent in a future litigation.

Reasons to Collaborate with a Trademark Attorney:

• Acquire tailored, strategic counsel for your brand.
• Sidestep unnecessary delays in your office actions and avoid costly refilings.
• Elevate your chances of achieving both approval and enforcement of your mark.

Final Thoughts: Shielding Your Brand Demands a Shrewd Filing Strategy

A trademark is more than a mere name; it is your character and corporate persona, and it is also the sort of thing a competitor could potentially use as a shortcut to your customers. Your character and persona are mostly safe from infringement if you are using the U.S. Patent and Trademark Office (USPTO) resources correctly.

Require assistance with your trademark application? At Cohen IP Law Group, we provide customized services for the filing of trademarks, all underpinned by solid legal know-how. Get in touch with us today and arrange a no-cost initial consult.