The following is a transcript of my video Improving the Odds for Your Trademark Application.
I get asked a very challenging question all the time “What are the chances do you think this will get through, this will get approved, when we apply for a trademark at the Patent and Trademark Office?” I can not make any promises, I can not make any predictions, because there is so much gray area in the field of trademarks, and sometimes there are unknowns that we may not know when we’re applying for a trademark application. But I do tell clients that I know how to improve the odds that their application will get approved. I know how to improve the chances of success. And there are several tips that I want to share with you about improving those odds.
The first most important one is to conduct a search before applying. Conducting a comprehensive search of all types of resources is extremely valuable. And then as it relates directly to the application odds, conducting a search of the USPTO’s records in their TESS database is very helpful because if there are potential obstacles, you want to know about them upfront. Perhaps you don’t apply at all. Perhaps you change the name. Perhaps you change the description in the application based on something that you find in that search.
The second way to improve the odds is having a proper description of goods and services that relates to the use or the intended use of the trademark. And in doing so, there are several things to balance. You ought to be balancing for potential conflicts, and at the same time balancing to need having a description that’s tailored to the core of what your products and services do along with having some words that might be key in your industry included in the description to make it more likely to appear in other third-party searches once you’re registered.
The third step to improve the odds is to work with an experienced professional. I get calls all the time to take over applications that were filed by other people who are not trademark attorneys. They were filed by attorneys who handle real estate law or online filing services that are or are not attorneys (it’s not readily apparent from some online services whether they are attorneys or not.) Or people who filed on their own and then encountered problems.
It’s very important to help improve those odds, to use an experienced attorney at the start, because as I mentioned, the search and the description go into the crafting of the application before it actually gets sent to the Patent and Trademark Office. Once it’s sent, there are limitations to things that can be done, or it may be more expensive to have to try to resolve and overcome issues that arise during the application process. So, although I can not tell you the odds that your application will be approved by the Patent and Trademark Office, I can tell you that by working with someone experienced (like myself), you are likely to improve those odds.