5 Trademark Filing Steps
In this article, I am going to try to outline the 5 trademark filing steps that will give you the best chance at a successful filing with the United States Trademark & Patent Office (USPTO).
Below are 5 trademark filing Steps to create a solid foundation and powerful brand.
1. Make sure you are the first to file
The first of the 5 trademark filing steps is to be sure that when you are ready to file your trademark, you are using and filing a “mark” that is not already taken or is not “confusingly similar” to another mark already registered. The search feature on the USPTO website allows individuals to see all the marks that have been filed and also what “class” they have been filed under.
It is in your best interest to perform an exhaustive search on your proposed “mark” because once filed, you will not be able to receive a refund if rejected by the examiner.
2. Be sure the Trademark you select is “Protect-able”
The second thing anyone looking to file a Trademark must understand is that not all words or phrases are eligible to be protected. Below is a list of characteristics that may determine the success of a filing and strength of the potential trademark, from weakest to strongest.
- Generic words may not be protected.
- Descriptive words are only allowed to be protected once they have attained a secondary meaning.
- Suggestive words are protect-able if they still identify the good/service. (ex Twitter)
- Arbitrary words have a high level of protection (ex. Apple)
- Fanciful or made up words are afforded the greatest scope of protection. (ex. Kodak)
3. File your Trademark early
Although your “common law” trademark rights arise automatically, you should still look to file your “mark” with the USPTO ASAP to secure exclusivity nationwide and to create constructive notice to all future applicants looking to file your “mark’ or something “confusingly similar”. By filing it early, you become first in time and are at the front of the line concerning that “mark”.
If you have not started using the “mark” in public yet, you can file an “Intent to Use” registration application as soon as you develop a bona fide intent to use your new name or logo in commerce.
4. Once Registered, the work starts
After you have filed and received a successful registration of your trademark, you must stay vigilant and continue to monitor potential individuals infringing on your intellectual property. Failure to adequately enforce your trademark rights can result in both (i) degradation of the brand, and (ii) potentially loss of exclusive rights altogether. If you decide to expand your business internationally, you will need to file separate trademark protections in foreign jurisdictions.
5. Protecting your Trademark gets more important as you grow
As your company grows, you’ll likely introduce new products, services, or brand variations, all of which may require additional trademark protection. It’s important to treat your intellectual property as a living asset. Each time you roll out something new, revisit the 5 trademark filing steps to ensure you’re covering the right classes and meeting current standards.
If your brand evolves or your offerings expand beyond the scope of your original registration, failing to update your trademarks can leave you exposed. Protecting your intellectual property isn’t just about legal compliance, it’s about building a foundation that supports long-term growth and adaptability. The 5 trademark filing steps are not a one-time process; they’re a cycle of strategy and protection that scales with your success.
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