- Search first. Search the USPTO (consider variations in spelling, spacing, and word order) so that you know what potential obstacles lie in front of the application. Of course, a comprehensive clearance search should be done as well because someone using a similar mark prior to you in a related or competing industry, even if they do not have a registration, is a significant potential problem.
- Words are generally more important than designs. A registration for a design technically covers just that design. A registration for words (a “standard character” trademark) covers all variations of the wording. In other words, when you register a logo you can only use ® next to the logo. When you register words, you can use ® whenever those words are used – in text, in logos, and more. Registering words alone will also provide better protection regarding domain names and usernames. Note that creative and distinctive logos should be protected, but they should be generally be protected in a separate application. But while generally protecting wording is more important, sometimes the best registration strategy – due to descriptiveness issues or potential conflicts – may be to file only for a design.
- Black and white is better than color. A large majority of the time, it makes sense to file in black and white, which protects all colors, rather than to technically protect only the color scheme provided in a color image. Of course, when color is integral to the brand, it may make sense to file in color – or to file two applications, one black and white and one covering particular colors.
- Be Patient. It takes the USPTO about 3 months on average to open a new application and review it for the first time (and this is much better pendency than in the past). In general, when filing based on use of the trademark in commerce, the entire registration process takes about 1 year – and can take far longer if there are hiccups in the process or a “suspension” of the application pending the outcome of some other earlier filed applications.
- Check the status. To make sure the process is completed as quickly as possible, it is advisable to stay on top check the status every month or so – at a minimum – via the USPTO website to ensure that a correspondence from the USPTO – generally via email – was not lost or missed. Our custom built internal software checks the USPTO status for each application we handle every single day – and is a savior because on occasion USPTO emails get bounced, or physical mailings get lost, delayed or sent to the wrong address. I have also created a free cloud-based tracking tool that anyone can use, sofTMware (www.softmware.com).
Posts Tagged ‘tips’
If your business might wish to take advantage of the new business opportunities for US companies in Cuba, consider proper trademark protection as well. Even under the prior embargo, US companies were permitted to file trademark application in Cuba. Now that the embargo may be amended or lifted, US companies that could have business interests in Cuba need to consider trademark ramifications. This is a particular concern because Cuba is a “first-to-file” country, meaning someone could obtain rights by registering a brand name even if they have not made any commercial use of the name.
I have written previously about the plethora of ways to use your trademarks to promote your brands. See my post, 50 ways to use your trademarks. But now there is a new way – on a Super Bowl® ring. Of course, very few will ever have this opportunity.
Last weekend, New England Patriots owner Robert Kraft presented players with their Super Bowl rings. The rings feature two registered trademark slogans, one on the side and one on the back: Do Your Job and We are all Patriots.
For a 360 degree view, see here.
It is unlikely than anyone reading this will ever get a Super Bowl ring – but the Patriots have shown that there are always new and creative ways to use your trademarks and build your brand.
Before launching a new brand name or company name, register the relevant domain names. Consider a few different extensions, not just the .com. And consider some different spellings if applicable. Once you make a name public, or file a USPTO trademark application, the world knows about it. And there are plenty of nefarious people who try to register domain names that correspond with brand names and company names so they can offer them for sale, or worse. (While there may be legal action available against a cybersquatter, such a proceeding could be even more expensive than buying the domain name from the party that bought it.)
Save money – and protect your brand – by registering domain names first.
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