Don't roll the dice on your Trademark Application!

 Don't just roll the dice on your trademark registration.

The trademark registration process can be very complicated and confusing for brand owners who want to protect their brand and/or register their brand on Amazon by filing for a federal trademark. One of the first things you hopefully learn is that the process and its result are not assured nor automatic. With several million trademarks already registered, making sure your mark is unique and distinguishable is getting harder. Online "do it yourself" filing services state that they cannot guarantee the success of the application that you file through their service. In many cases, these online "do it yourself" options cannot even represent you beyond the mere filing of the application, as the USPTO only allows licensed attorneys to represent applicants before it. Trademark registration is a very technical and strict process. One mistake or even a failure to respond within the time allotted can be disastrous to your chances of attaining a registration. And since the process is taking over a year at present, you may find yourself losing valuable time and having to start again anew after a full year of using your Brande, only to find out it will not be successfully registered. Everyone who files a trademark application does so probably because they want to be successful. No one spends the money and time to get a rejection letter. So how can you improve your luck, and increase the likelihood and odds/chances that your application can succeed? Here are some strategies and tips to employ.

1. The number 1 tip is to use the services of a licensed and experienced trademark lawyer. This will increase your chances of successful trademark registration in a number of ways. While even attorneys cannot guarantee the results of any application due to the wide variety of the over 700 trademark examiners employed by the USPTO, an experienced attorney knows how to follow best practices honed from their practice and knowledge. Attorneys will employ those best practices in preparing your materials to support the application. Attorneys likewise will monitor your application the entire 12-13 months and will know what to do when you get an office action. Most trademark attorneys offer fixed fee or flat fee services, so you are bound to find one that fits your budget. Having an attorney work with you before you file is crucial. Unlike other things in life, there are some things that cannot be changed after you file the application or get an office action. You might be forced to refile from scratch. Lastly - research has reported that applicants without an attorney stand about a 50% chance of success, yet that figure goes up to about 83% for attorney-represented applicants.

2. The next tip is to do a comprehensive search before you file! With over 7 million registered trademarks at the USPTO and over 13 million new trademark applications filed worldwide in the past year, it is a very crowded field. A registered trademark need not be identical to yours to pose a threat to your registration hopes. It just needs to be similar enough to pose a likelihood of confusion (in the mind of the USPTO examiner assigned your file). A competing trademark does not even have to be the exact same class, if it is determined that it is a related class. You don't want to blindly file and find out by an office action that there are 30 other marks registered or pending before you that pose a risk of confusion and stall your application - the 3-month deadline to respond to an office action should not be spent scrambling to find answers! That is why it is always recommended that you first do a comprehensive search. An attorney will typically do a "knock out" style search of the USPTO for exact matches, then order a comprehensive search from a reliable 3rd party vendor for all US, all states, common law and domain names. That vendor will send the results to the attorney to be analyzed. That attorney will report back to you on what was found and the risks to your chances. If there are possible risks, they will identify arguments that can be worked on BEFORE you get the office action. If there is a risk that a competitor's trademark may be raised by the USPTO to refuse your application, do you want to limit yourself to 3-months to strategize a response, or do you want to start before you file and get the benefit of several additional months? The answer is obvious - the search before filing is very valuable. Plus - there are a variety of 3rd party search vendors, such that you are bound to find one whose price fits your budget. Our office will work with whichever search vendor you choose.

3. Use a composite logo and word mark - If there are already registered trademarks for the wordmark you want to use, one way to establish identity and distinctiveness is to have a logo with that wordmark and seek to register them as one trademark.

4. Research the classes - Identifying the class of goods/services is a critical aspect of the trademark application process. An attorney will know how to tailor the application to apply to the classes of goods/services you need. The USPTO has a searchable ID manual for that purpose.

Even if you take care and follow all the best practices, that does not guarantee that your trademark application will be granted, but considering these best practices can increase your chances of a successful trademark registration!

Our office helps clients with trademark concerns across the US and Internationally. We offer a variety of flat/fixed fee services. Contact us for a FREE initial consultation to see what services we can offer you!

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