By: Boyana Bounkova
Table of Contents
- Make sure no one else is using the trademark for similar goods or services.
- Select a strong trademark, which can be protected.
- File your trademark application as early as possible.
- Make sure there is a domain name available for the trademark you have selected.
As a seasoned trademark attorney, I have years of experience working in all aspects of trademark law. Including but not limited to trademark applications, trademark litigation, trademark disputes, trademark coexist agreements, trademark usage negotiations, USPTO Office Actions, response to trademark infringement Cease and Desist (C&D) letters from another trademark attorney, and more.
There are a number of tips that you should keep in mind before filing your trademark application to ensure that your application will pass the requirements of the USPTO and the Trademark Act.
Make sure no one else is using the trademark for similar goods or services.
The first and very important rule is to make sure the name that you have selected for your brand is not already used by a competitor for goods and services similar to the ones that you offer or plan to offer.
To do so you or your trademark attorney needs to search the available USPTO to find whether trademarks with the same or similar brand name have been filed or registered and if such trademarks exist whether they offer products and services similar to yours.
Even if there is no other trademark registered or filed for this name, it is also good for your trademark attorney to do a general search through internet search engines to make sure other companies are not using the name in commerce in a similar way.
Even if their trademark is not registered, their use of a similar name can still create consumer confusion, and this is what trademarks are meant to prevent.
Select a strong trademark, which can be protected.
Another very important tip is to select a name for your trademark that is distinctive and does not describe the goods and services you will be offering.
It doesn’t take a trademark attorney to know that the more unique and distinctive the name of the brand, the more likely it is it will receive a trademark registration.
Try selecting trademarks that are fanciful (made-up words such as ‘Pepsi’, ‘Xerox’, ‘Kodak’, etc.), arbitrary (words that are not related in any way to the services or goods you offer such as ‘Apple’ for computers or ‘Dove’ for soap and cosmetics), or suggestive trademarks (that suggest or slightly hint at a quality or aspect of the product or service you offer, such as ‘Citibank’, ‘Microsoft’, etc.).
Those trademarks can easily be registered. On the other hand, trademarks that are considered descriptive (describe the product or service) require evidence that the trademark has acquired secondary meaning in order to be registered and receive protection.
If you choose a merely descriptive name for your brand, your trademark attorney will not be able to register it without the USPTO initiating an office action.
Until your trademark is registered you (or your trademark attorney) will not be able to successfully sue someone for using a confusingly similar trademark.
Words that cannot be registered as trademarks are generic names – i.e. names identical to the product or service offered or marketed with this trademark (i.e. apple for an apple or for apple selling service).
File your trademark application as early as possible.
The earlier you file your trademark application the higher the chance that you will obtain registration for it in case there are competitors filing for a similar trademark.
Another reason to file your trademark early is that you go through an early assessment process in the USPTO and this way you make sure that you are not putting yourself at risk by infringing on someone else’s trademarked name.
USPTO will review your trademark application and if there are no obstacles (likelihood of confusion, descriptiveness, etc.) the trademark will be approved for registration.
If you wait too long to register, you may face a situation where you have started using your trademark for your products and/or services and have obtained customers, but the trademark was refused registration by the USPTO.
In that case, you will need to rebrand, which will cost time, money, and effort.
Another reason to file early for trademark registration is you have priority on the name from the moment you file. The application sets your filing date as the constructive date for establishing nationwide priority.
If you file a trademark intent to use application on January 1 but haven’t launched your product yet and another company comes in and files an actual use trademark application on January 17, you will have superior rights to the name even though the other company went to market first.
Make sure there is a domain name available for the trademark you have selected.
You do not want to be in a situation where you have a trademark secured, but someone else has already registered and using a domain name for that trademark, which may lead to consumer confusion and difficulties for your potential clients to find your business webpage and for you to grow your business.
We offer a free consultation with an experienced trademark attorney. If you are interested in talking about your trademark you can reach out to us for a free consultation.
Boyana Bounkova Attorney at Law
