Questions to Help You Build a Trademark Application Strategy
Thinking about filing a trademark application for your business’s logo or name? Do you have a strategy for success? Or is your plan to slap together an application and pray for success?
If you want to be successful in obtaining a trademark registration, it usually takes some careful thinking to develop a good strategy.
Consider some of these factors prior to completing a trademark application:
- What is the basis for the trademark application? In other words, what goods/services is the trademark going to be used to market in commerce?
- Should you file in just one class or in multiple classes? Multiple classes will provide the broadest protection possible.
- Are you going to claim color or not?
- Are you going to register the mark as a stylized wordmark or in plain block letters?
- What description will you use for your goods or services? You can check out the descriptions in the USPTO Trademark ID Manual, which are open for use. Another option is to draft a customized description yourself.
- Are you ready to file an In-Use trademark application with examples that clearly demonstrate use of the trademark promoting your goods/services in the marketplace? Or do you need to file an Intent-to-Use trademark application? You would go this route if you have not used the mark in commerce yet.
- If you file an In-Use trademark application, do you know its first date of use in commerce? Do you have documented evidence of it?
- Do you need to claim acquired distinctiveness? The foundation for this claim rests on five or more years of the mark being used in the marketplace.
- Did you conduct a trademark clearance search to find any trademark registrations that may block the registration of your mark? Look out for marks that visually resemble yours, especially if your businesses are similar.
- If any standing trademark registrations will block the registration of your mark, are you prepared to file a Notice of Opposition or a Petition to Cancel the other trademark registration?
These are just some of the questions and issues you need to consider before beginning the application process.
The USPTO website contains a wealth of information. If you have the time to study it, many videos illustrate questions and answers that you need to know.
It is always wise to consult with an experienced IP lawyer, too. They will be able to assist you with the difficult questions and help you build a trademark strategy from the ground-up. As you move toward trademark registration, make sure to ask: what is best for you?Share