The following is an updated transcript of my video, Improving the Odds for Your Trademark Application.
One of the questions I hear most often is:
“What are the chances that my trademark application will be approved?”
It is a reasonable question, but there is rarely a reliable percentage I can give.
Trademark applications are highly fact-specific. The outcome can depend on the proposed trademark, the goods or services, earlier trademark rights, the evidence in the record, the examining attorney’s analysis, and issues that may not be apparent when the application is filed.
No trademark attorney can guarantee that an application will result in registration.
But there are steps you can take before filing to reduce avoidable problems and put an application in a stronger position.
After more than 25 years working with trademark applications, including experience as a former USPTO trademark examiner, these are five of the most important.
1. Conduct a Comprehensive Trademark Search Before Filing
One of the best things you can do before filing a trademark application is search for potential conflicts.
Do not limit the search to the exact wording of your proposed trademark.
A useful trademark clearance search may consider:
- Federal trademark applications and registrations
- Similar spellings
- Similar-sounding names
- Related words or meanings
- Common-law uses that are not federally registered
- State trademark and business records
- Internet and marketplace uses
- Domain names
- Related goods and services
The USPTO’s current Trademark Search system is an important part of that process.
The previous USPTO search system, TESS, was retired in 2023.
Why search before filing?
Because identifying a significant problem before submitting an application gives you options.
Depending on what the search reveals, you might:
- Choose a different name
- Modify your branding strategy
- Conduct additional investigation
- Narrow or refine the goods or services
- Decide that the potential risk is acceptable
- Decide not to file the application
Once you have invested heavily in a name and filed an application, some of those options may become more difficult or expensive.
2. Identify the Goods and Services Carefully
Every trademark application must identify the specific goods or services associated with the trademark.
This is much more important than it may appear.
The identification should accurately describe what the applicant actually provides, or has a bona fide intent to provide, under the trademark.
It should also be drafted with the long-term scope of the application in mind.
Why?
Because after an application is filed, an applicant can generally clarify, limit, or delete goods and services, but cannot expand the identification to cover additional goods or services outside its original scope.
That means the language used at the beginning can have long-term consequences.
A well-prepared identification should balance:
- Accuracy
- Appropriate scope
- USPTO requirements
- The applicant’s actual or intended business
- Potential conflicts identified during the trademark search
- The applicant’s foreseeable branding plans
This is one of the reasons the search and the application strategy should work together.
3. Make Sure the Correct Owner Files the Application
Another important consideration is ownership.
Who actually owns the trademark?
Is it:
- An individual?
- An LLC?
- A corporation?
- A partnership?
- Another legal entity?
The answer should be determined before the application is submitted.
Some application mistakes can be corrected later. An incorrectly identified trademark owner can create much more serious problems and, depending on the circumstances, may require starting over with a new application.
This is an area where getting the application right at the beginning matters.
4. Choose the Correct Filing Basis and Evidence
A trademark application also needs an appropriate filing basis.
For many U.S. applicants, that means filing either based on:
Current use in commerce. The applicant is already using the trademark in commerce for the identified goods or services.
Intent to use. The applicant has a bona fide intention to use the trademark in commerce but has not yet begun qualifying use.
If an application is based on current use, the evidence submitted to the USPTO – called a specimen – must properly show the trademark being used in connection with the identified goods or services.
Specimen problems are a common source of difficulty in trademark applications.
Thinking through the filing basis, dates of use, goods or services, and specimen before filing can prevent problems that might otherwise arise during examination.
5. Work With an Experienced Trademark Attorney From the Beginning
Many U.S.-domiciled applicants are permitted to file trademark applications without an attorney.
But filing the form is only one part of the process.
The strategic decisions often happen before the application is submitted:
- Is the trademark sufficiently distinctive?
- What did the clearance search reveal?
- How significant are the potential conflicts?
- Who owns the trademark?
- What goods and services should be included?
- What filing basis applies?
- Does the specimen show proper trademark use?
- Should the wording or scope be adjusted before filing?
I regularly speak with business owners after they encounter problems with applications they filed themselves, through filing services, or with professionals who do not regularly handle trademark matters.
Some problems can be fixed.
Others cannot.
And even when an issue can be corrected, doing so may involve additional expense, delay, or a narrower scope of protection.
That is why experienced trademark guidance can be particularly valuable before the application is filed, rather than only after the USPTO raises a problem.
Can a Trademark Attorney Tell You Whether Your Application Will Be Approved?
No one can responsibly guarantee that a trademark application will be approved or registered.
A comprehensive search can uncover many potential problems, but no search can eliminate every uncertainty.
An experienced trademark attorney can, however, evaluate the proposed trademark, identify potential risks, conduct and analyze searches, develop a filing strategy, and prepare the application with those issues in mind.
The goal is not to promise an outcome.
The goal is to make informed decisions and avoid preventable problems.
What Factors Affect Whether a Trademark Gets Registered?
Many issues can affect the outcome of a trademark application, including:
- Whether a confusingly similar trademark already exists
- Whether the proposed trademark is distinctive
- Whether the trademark is merely descriptive or generic
- Whether the trademark functions as a source identifier
- Whether the goods or services are properly identified
- Whether the correct owner filed the application
- Whether the filing basis is appropriate
- Whether an acceptable specimen is submitted when required
- Whether USPTO deadlines and procedural requirements are satisfied
- Whether substantive refusals can be overcome
That is why two applications that may appear similar on the surface can have very different outcomes.
Frequently Asked Questions About Trademark Application Approval
What are the chances my trademark application will be approved?
There is no reliable percentage that applies to every application. The likelihood of registration depends on the particular trademark, the goods or services, earlier rights, the application itself, and any legal issues raised by the USPTO.
Should I search for my trademark before applying?
Yes. A comprehensive trademark clearance search can identify federal registrations and applications, common-law uses, and other potential conflicts before you invest heavily in the name or file an application.
Does finding no exact match in the USPTO database mean my trademark will be approved?
No. A likelihood of confusion refusal does not require two trademarks to be identical. Similarities in appearance, sound, meaning, or commercial impression can matter, as can the relationship between the respective goods and services.
Can I change my goods and services after filing?
You can generally clarify, narrow, or delete goods and services within the scope of the original identification, but you cannot broaden the application to add goods or services outside that original scope.
Do I need a trademark attorney to file an application?
U.S.-domiciled applicants generally are not required to hire an attorney. Foreign-domiciled applicants generally must be represented before the USPTO by a U.S.-licensed attorney.
Even when an attorney is not required, the USPTO encourages applicants to consider working with a U.S.-licensed attorney experienced in trademark law.
The Best Time to Strengthen a Trademark Application Is Before Filing
There is no formula that guarantees trademark registration.
But preparation matters.
Search thoroughly. Identify the goods and services carefully. Confirm the correct owner and filing basis. Make sure the application accurately reflects the trademark and the business. And consider working with someone who regularly handles trademark applications.
Those steps cannot guarantee approval.
They can help you make better decisions before the application reaches the USPTO.
If you are preparing to file a trademark application, learn more about our trademark search services and trademark registration services.
This article provides general educational information and is not legal advice. Every trademark application depends on its particular facts and circumstances.
