Before You File A Trademark

The trademark registration process might involve many steps, but it need not be complicated. If you take the proper steps before submitting your application, you will greatly increase your chances for approval on the first attempt. Since the United States Patent and Trademark Office (USPTO) does not issue refunds for rejected applications, first-time approval becomes that much more important.

The more due diligence you perform, the easier the application process becomes. To start, it is important to understand the benefits you will receive by filing a trademark application. After that, knowing the proper research tactics, knowing whether you need an attorney, and becoming familiar with the various trademark classes will help guide you through the application process.

At this point you should also understand a few technical items, such as the idea of filing a name and logo in the same application, and registering for a trademark before your product is market ready.

Finally, we provide a checklist so you can get everything together before, during, and after the filing process.

Things to Know Before You File

Reasons to register a federal trademark

See the main article: What Are the Benefits of Trademark Registration?

Before you even think of starting the trademark application process, you should understand exactly why you are registering in the first place. Once you understand the benefits and rights trademark ownership affords your business, you will be more enthusiastic about the process.

  • You’ll legally own the mark and gain all benefits related thereto.
  • You can pursue legal action against anyone using your mark without your permission.
  • Your mark will appear in searches, so companies will know that you own the mark.
  • You can prevent imported goods from being sold under your trademarked name.
  • You’ll have an easier path to an international trademark.
  • You can use the ® to signify your registered trademark.

Performing trademark research

See the main article: Trademark Research To Conduct Before Filing Your Application

Even if you plan to employ an attorney, conducting research beforehand can increase your chances for a successful application. That is, the more you know before you hire an attorney, the better job the attorney can do in searching every nook and cranny.

For starters, it is important to understand why the USPTO rejects or refuses applications. Once you know that they may refuse to register marks that are confusingly similar to existing ones, that are merely descriptive of the product or service, that use only a geographic term or surname, or that are merely ornamental, then you will know whether your trademark holds up to that scrutiny.

In order to ensure that your mark is not confusingly similar to an existing one, you’ll have to conduct a number of searches. Only after you have cleared your mark through these databases can you be sure of your mark’s uniqueness–and only a unique trademark is worth filing with the USPTO.

Do I need an attorney?

See the main article: Do I Need a Trademark Attorney?

The trademark application is fairly straight forward, and attorneys cost money. Some companies might decide to forgo this expense and file the trademark application themselves. While this can result in success, it leaves the company exposed to many risks.

The attorney might prove well worth his or her fees. Applications filed with the assistance of an attorney have a 50 percent greater chance of approval than those filed without one. Since the USPTO does not refund fees for rejected applications, hiring an attorney can actually save money in the long run.

Ultimately, hiring an attorney comes down to the company’s specific needs. But in most instances, the assistance of an attorney will prove worth the cost.

What is a trademark class?

See the main article: The Ultimate Guide to International Trademark Classes

When you file a trademark application you will have to declare the class of goods or services you provide. The USPTO provides 34 classes for goods and another 11 for services. Understanding these classes before you file your trademark can make the application process much easier.

Should I file a name and logo together?

See the main article: The Crucial Reason To File Trademarks Separately

Each trademark application incurs a separate fee, so some companies might think it wise to combine filings. If your logo contains your business name, it will seem tempting to file only the logo. Yet doing this can compromise your rights as they pertain to your business name.

Every individual entity you wish to trademark deserves a separate application. This will mean more in application fees, and potentially more in attorney fees. But it also means you receive comprehensive rights to all of your marks upon approval.

There are no real shortcuts in the trademark process. For every one you try to take, you lose rights you are otherwise afforded under the law. It is always smarter to file individual trademark applications, even if it costs you more money up front.

Should I file a trademark before my product is market-ready?

See the main article: Should You File for a Trademark Before Your Product Is Market-Ready?

Startups must be smart with their limited funds. Misallocation can cripple a new company. So should a startup then wait to file its trademark? As with most issues, this depends on the company’s current situation. But it is generally advisable to file a trademark application as soon as possible.

Failing to file a trademark application leaves a company exposed. A competitor can get wind and file for that mark, leaving the company with few options. Imagine working diligently on a project for months, even years, only to find out that a competitor filed for and received your trademark along the way.

True, a company must start using a trademark in commerce shortly after receiving approval, typically within six months. But consider that 1) the approval process can take many months, perhaps up to a year and a half, and 2) trademark owners that are not using the mark in commerce can file for extensions.

All of this adds up to an imperative: file your trademark application early. It is almost always a wise use of funds, especially after you have definitively decided that you will use the mark.

The trademark registration checklist

See the main article: Your Trademark Registration Checklist: How To Get Started

It will prove helpful to have a list of steps in the trademark application process. These include conducting a search, identifying what products or services your company offers, deciding on your scope, checking your domain name, and more.

Even if you plan to retain an attorney, understanding the process will make your process smoother.

Xavier Morales, Esq.

About the Author:

Xavier Morales, Esq.

Mr. Morales founded this trademark law practice in January 2007 with the goal of providing intellectual property expertise to entrepreneurs and businesses around the country. Since then, he has filed more than 6,000 trademarks with the USPTO. You can learn more about Xavier here.

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