5 Steps to a successful filing
In this article I am going to try to outline 5 steps that will give you the best chance at a successful trademark filing with the United States Trademark & Patent Office (USPTO).
1. Make Sure you are the first to file your “mark” (or something too similar)
Be sure 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 anther mark already registered. The search feature on the USPTO website allows for individuals 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 that 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)
The more similar your trademark is to other trademarks on the market, the less identifying strength it is going to have.
3. File your Trademark earlier rather than later
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 with respect to 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 bonafide intent to 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 will probably have more items and or services under the initial Trademark umbrella that may need protecting.
Be sure to keep your intellectual property protected at all times. The best way to do this is by filing new trademarks following the steps above, each time you roll our a new product or service. Further, if you create new goods or services and keep them under the existing trademark, you may run into problems with clearance in the new market. If your brand changes over time, new registration applications may be necessary in order to protect modified versions of your trademarks.
Protecting your Intellectual Property will pay dividends in the future and is a critical element in making sure your company or ideas have the best chance of being successful.
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