What Can Be Done to Help the Trademark Application Process Go As Smoothly As Possible?
While the process to obtain a trademark registration at the USPTO is an important step in protecting your business's intellectual property and building up your brand as a valuable asset, the process itself can be overwhelming and frustrating for those unfamiliar with it. The application process itself can be very costly, and if the application is not successful, the money spent is non-refundable. Likewise, given that the process takes over a year, it can be frustrating to be using your trademark for that entire time before finding out there is a material problem which prevents you from obtaining a trademark registration (or which may even force you to re-brand). As daunting as the process may seem, various preparations can help make the road to registration less bumpy. By taking the right steps and avoiding common mistakes, you can make the trademark application process smoother and less stressful. Here's what you need to know.
Be Sure to Choose a Distinctive and Eligible Trademark
A trademark can be anything (a word, logo, phrase, design or symbol) which identifies and denotes your business by acting as a source identifier. It thus follows that you cannot seek US trademark registration for something that is not unique and is actually already in use by someone else. That much is usually clear to non-lawyers. However, non-lawyers often will try to seek registration of generic or merely descriptive words, only to find out that with an Office Action refusal, that their chosen trademark is not eligible for registration as a federal trademark. It follows that, in order to make the process as smooth as possible, and maximize the prospects of a successful registration, it makes sense to select a distinctive and eligible trademark, which can act as a strong trademark. In order to understand the various types of trademarks, here is the hierarchy.
- Fanciful trademarks: These use made-up words that mean nothing outside of the brand itself, like Xerox® and Exxon®. These are considered the strongest type of trademark, and thus most likely to be successfully registered, as they are considered inherently distinctive.
- Arbitrary trademarks: These are comprised of words we know, but that are unconnected or unrelated to your particular good or service, like Amazonl® for e-commerce or Apple® for computers/phones. These too provide a high likelihood of successful registration, as they are inherently distinctive.
- Suggestive trademarks: These use words that hint towards the goods/services being offered, like KitchenAid® (suggestive of devices helping in the kitchen) or Jaguar® (suggestive of a fast vehicle). These provide a higher likelihood of successful registration, as they are generally inherently distinctive.
- Descriptive trademarks: These use words that describe the goods/services being offered, like Holiday Inn® or American Airlines®. Descriptive marks are more difficult to obtain trademark registration for, as they have limited distinctiveness. Descriptive marks can be approved for the USPTO's Supplemental Register (alongside weaker rights). They can only be approved for the primary Principal Register if certain requirements are met, such as the mark being distinct from its time in commerce (ie. if the mark has been in use at least 5 years).
- Generic trademarks: These use words that literally describe the goods/services being offered, such as Construction Lawyer (for a lawyer practicing construction law). The USPTO does not approve generic marks, as they are not distinctive.
A unique word or design trademark not only increases your chances of approval in the USPTO process, but also makes your brand memorable and allows it to stand out from competitors.
Pro tip = It is a good idea to have several possible trademarks in mind, and to consult with an experienced trademark attorney in order to check those possibilities before choosing which to seek registration for. Thus, the use of a lawyer is highly recommended for this phase.
Be Sure to Conduct a Comprehensive Search and/or Obtain a Clearance Opinion
Before submitting your application, it is essential to ensure your desired trademark isn't already in use by someone else. Again, if there is an existing USPTO registration for the same or similar mark in the same or similar category of goods or services as your own, the USPTO Examiner Attorney will issue an Office Action refusal letter. If you do not have sufficient arguments to overcome that refusal, your application ends there, without obtaining a registration.
Performing a comprehensive search involves searching for same/similar marks at the USPTO, state trademark registries, and also unregistered usage ("common-law"). There are a variety of third-party vendors that provide such searches. However, their search report will only provide data - which you will need to interpret. Of course, knowledge of the trademark law and rules of examination at the USPTO will assist in making heads or tails of the search reports. For that reason, hiring a lawyer to conduct a Trademark Clearance Opinion is even better. An attorney can help you avoid potential conflicts that may arise from selecting a trademark similar to an existing one. This proactive step reduces the risk of rejection and saves you time and money down the line.
Most experienced trademark attorneys provide a Trademark Clearance Opinion for a flat fee.
Be Sure to Submit Appropriate Specimens
As part of the USPTO application process, you will need to provide a Specimen, proving that you are using the applied for trademark in commerce for the specified goods/services listed in your application. Specimens are real-world examples showing how you're using the trademark in commerce, and the USPTO has rules about what is (and is not) an acceptable specimen. For example, while a business card may suffice as a specimen for the provision of services, a mock-up of a business card will not, and a business card generally will not suffice to prove sale of a particular good.
A proper specimen can take the form of a photograph showing your trademark on a label or hangtag attached to your goods. It could also be a photograph of your trademark on the packaging for your goods. The important thing is that from the specimen it must be clear that customers can directly associate your trademark with your goods.
Be Sure to Timely Respond to Office Actions
If the USPTO Examiner Attorney finds any faults or flaws with your application, they will issue an Office Action (also called a non-final refusal). If you receive such an Office Action, you must respond within 3 months of the date of that letter, or your application will be abandoned (and you will not obtain a registration). Likewise, if you do not respond to all the items listed in the Office Action, you will not be successful, and the Office Action will be made final.
You may seek a one-time extension of an additional 3 months by paying a fee and filing the appropriate form (before expiration of the initial 3 month period). Thus, the time period you have to deal with an Office Action is limited. It makes great sense to consult with an experienced trademark lawyer if you get issued an Office Action, to make the most of this time and to present the best arguments possible to overcome the Office Action.
Common Challenges and How to Avoid Them
Even prepared applicants can run into challenges. Here are some of the most common pitfalls and how to steer clear of them:
- Misunderstanding Application Forms: Accidentally completing forms incorrectly can lead to delays or rejection. A lawyer can help ensure all forms are properly filled out.
- Missing Deadlines: Deadlines for responding to Office Actions, Notices of Allowance, or other USPTO forms are strict. Keep track of these dates and prioritize timely responses.
- Choosing Generic or Descriptive Trademarks: Avoid trying to trademark something that describes the product or service rather than distinguishes it.
- Submitting the Wrong Specimens: Make sure your specimens adhere to USPTO requirements by consulting a trademark lawyer before submission.
Why Getting Legal Help is Worth It
Trademark applications are more than just paperwork—they're legal processes with numerous requirements. Hiring an attorney experienced in intellectual property law will save you from costly mistakes and help maximize your chances of approval. A knowledgeable attorney can lead you through the process, from preparing the application to responding to potential challenges. Additionally, having an experienced trademark practitioner attorney on your side ensures that you won't miss important deadlines or paperwork, which can derail your application. They will handle everything from proper searches to application prosecution, leaving you free to focus on building your brand.
The trademark application process doesn't have to be overwhelming. By choosing a distinctive trademark, conducting a clearance search, preparing the right specimens, and working with a legal expert, you'll set yourself up for success. Remember, protecting your trademark is an essential investment in your business's future.
If you're ready to take the next step, contact our law firm today to schedule a consultation. We are here to make your trademark application process as smooth and stress-free as possible.
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