This is an edited transcript of the video posted below.
Over the years I’ve worked on thousands of trademark applications. First, I’ve reviewed thousands of trademark applications as an examine,r and now in private practice since 1999, I have filed many thousands of trademark applications for clients. With all of this experience, I want to share five important tips to improve the odds of a trademark application’s success.
- First is conducting a search before apply. You want to know that hopefully the name is unique in your industry. Even if there are questionable potential conflicts, you want to know about them because that might inform your strategy in the application process and we’ll get to more on that later.
- Another important aspect of the trademark application is asserting the proper ownership of the application. Generally if the business is operating as a corporation or LLC, even if it’s a very small business, generally the corporation or the LLC will be the owner and not the individual. But an application with incorrect ownership could be null and void or worthless, so it is important to get the ownership correct.
- Another important tip for the application process is having the proper description of goods and or services associated with the mark. This is important because that’s the scope of protection granted by the registration when one issues. And it’s important because the wording in the description of goods and services is how others might find your mark when they’re searching for potential conflicts. Because they might not only search based on the name, but they might search based on descriptions and keywords based on your industry. There’s a fine line in the description process between a broad description that might encompass a full scope versus specific keywords and details that relate to your products or services in particular industry.
- Perhaps the most important tip – actually these are all of equal importance – is to file quickly. Don’t wait, don’t sit on it. If somebody else files before you for a similar name in your field, that’s bound to cause, at a minimum, headaches, expenses and delays. It could even jeopardize your rights in the name altogether, so don’t wait to file. You can file based on a bona fide intent to use the mark before you’ve actually used it in connection with sales, if applicable.
- Finally, when picking what to file for, oftentimes small businesses in particular will file for a logo if they’re filing one application because the logo also has the words in it and they think that they’re getting more by including the logo. It’s actually the opposite. You actually get more when you file for just the words if you can. Because protecting just the words will cover all fonts and styles and designs for those words also has bigger ramifications for social media, domain names, Amazon brand registry. So protecting the words and what’s called the “standard character trademark” application is generally much more valuable than protecting a logo.
These are five big tips to improve the odds of a trademark application getting approved and becoming registered. Of course, there are many other factors and potential obstacles in the process. I often refer to it as a long and winding road. I recommend that anybody who is embarking on that journey use an experienced trademark attorney to help navigate the way.