How do you register a trademark successfully?
Anyone can file a trademark application with the USPTO. You might have filed one yourself. The challenge is not in filling out a USPTO online trademark form, but in doing the pre-filing due diligence necessary to ensure a smoother examination process. In other words, what you do before filing a trademark application will significantly impact whether or not you can register your trademark.
Need to register a trademark? Call Vic at (949) 223-9623 or email vlin@icaplaw.com to explore working with us.
Is your mark too similar to a registered trademark?
Most folks are aware of the risk of a trademark application being rejected for being too similar to a registered trademark. So they go on the USPTO trademark site or some other site to search their desired trademark. There’s a problem. How do you know if your trademark search is adequate?
It’s not enough to search for identical trademarks. The standard for refusing the registration of a trademark is whether there is a likelihood of confusion with any registrations.
Moreover, what about pending trademark applications filed before yours? Have you searched pending trademark filings that might cause your later-filed application to be suspended? If you came across such pending marks, can you gauge what level of risk is posed by those applications? Have those applications themselves been rejected? Which pending marks are allowed and about to register?
What is a common trademark rejection that has nothing to do with similarity?
Perhaps you did a search and found no similar trademarks. The coast is clear, it appears, so you file your trademark application expecting a smooth examination process. About eight to ten months later, you receive a rejection that has nothing to do with your mark being similar to other trademark registrations. Instead, your mark is being rejected for being merely descriptive. What is this rejection?
Essentially, the USPTO trademark examining attorney believes that certain wording in your mark describes a characteristic of your goods or services. For example, your mark may contain a certain noun or adjective that refers to the goods or services identified in your application.
Had you known about the risk of a merely descriptive refusal, you might have adopted a different trademark or added a term to the mark you applied for. Now, you’ve waited almost a year to find out that your mark, though not similar to any registered trademarks, has been rejected.
To improve the chances of success in registering your trademark, consider adding a more unique name or made-up word to any descriptive terms in your mark.
How to Register a Trademark Without Wasting Time or Money
To pursue what is important to your business, you have only a finite amount of time, energy and money. Of those three resources, time is arguably the most scarce. It is indisputably irretrievable. So can you afford to waste 8-10 months of time to hear back from the USPTO on a trademark application that was filed incorrectly? While certain mistakes can be corrected, others can be fatal.
For example, you cannot make any material amendments to the mark once filed. That means you cannot make any substantial changes to the trademark in your pending application. Instead, you would need to file a new trademark application. Can you afford to wait a year to find out that you have to repeat the process and file (or refile) a new trademark application?
Put Yourself in the Best Position to Register Your Trademark
Why burn valuable time that can never be recovered? Clear potential hurdles before filing your application so that you’ll give your trademark a better probability of a successful registration. Email Vic at vlin@icaplaw.com or call (949) 223-9623 to explore how we can help.
