The trademark application process starts with a branding decision – what is the particular word, symbol, tone, smell, or other source identifier with which you want to associate your goods and/or services? Prosecuting trademark applications before the USPTO is generally more or less complicated depending on the mark for which trademark protection (i.e., a registration) is being sought. Common pitfalls in the trademark application process include:
Forgetting that you are applying for a registration. Unlike filing registrations with the U.S. Copyright Office, you must apply for the right to obtain a federal registration by demonstrating to the USPTO that your mark and its use(s) meet statutory requirements. Obtaining a federal trademark registration is not simply a matter of paying the filing fee(s).
Making the mark too descriptive. Applicants have a tendency to (initially) brand their goods and/or services with words describing what the goods and/or services are. Avoid doing this and remember: the more arbitrary and fanciful (i.e., invented), the better.
Not conducting a thorough clearance search. A search can start with Google, but it must involve scouring the USPTO’s Trademark Electronic Search System (TESS) and should involve investigation into relevant state business registries. The TESS system is quite antiquated compared to a search engine such as Google and efficient TESS utilization requires a bit of practice. You can either do this before filing the application or wait for the USPTO examiner to do so with potentially prejudicial results.
The flowchart illustrates a basic trademark application process that omits appeal and opposition procedures. Contact Us to to obtain further information about the trademark application process, our services, and fees associated therewith.