Written by attorney Brian A. Hall

Three Decisions You Have to Make in All Trademark Applications

This guide provides insight into the three critical decisions required when attempting to register a trademark with the United States Patent and Trademark Office (USPTO). It assumes that you have already performed a trademark availability assessment, sometimes known as a trademark clearance, to ensure that your mark is (1) not likely to be refused for creating a likelihood of confusion with a pending or registered mark; (2) not likely to subject you to claims of trademark infringement by third parties; and (3) distinctive enough to qualify for registration on the Principal Register. A trademark attorney can advise you regarding the importance of and value of a trademark availability assessment.

Once you have cleared your mark, the following three decisions will affect whether or not you are able to successfully register your trademark.

  1. Intent to Use Mark versus Actual Use in Commerce Mark.

One of the most important decisions is whether to file the trademark application as an intent to use mark or an actual use in commerce mark. This is because priority determines who has rights in a particular mark should a dispute arise. While it sounds simple ("I'm using the mark so I might as well file the actual use in commerce mark"), it is a decision that requires attention early. An intent to use mark can be filed before any use in interstate commerce. It can protect against a third party filing an application prior to or at the same time as your first use, which creates obstacles to a successful registration. If use actually exists, it is critical to understand what use in commerce dates to use so as to protect against claims of fraud in the future.

Tip: File early, even if it means as an intent to use mark, to protect yourself, even if it means not pursuing the application should you choose to go in a different direction with your mark.

  1. Standard Character Mark versus Special Form Mark (Stylized and/or Design)

A standard character mark is one made up of words, letters, and/or numbers without any design element. You are not claiming rights to a particular font, style, size, or color. A standard character mark may give you the broadest protection, but you should understand that you may be sacrificing specific protection for the design elements noted above.

A special form mark is one made up of stylized words, letters, and/or numbers. The design may appear by itself (i.e. a logo) or combined with words, letters, and/or numbers. Entities often times protect both the standard character mark with one registration as well as a special form mark with a separate registration.

Tip: The results of the trademark clearance may dictate which mark to choose. However, if the budget is tight, a standard character mark is a good place to start.

  1. One International Class versus Another

The trademark application requires that the owner identify the goods and/or services with which the mark is, or will be, used. Each listing of goods or services falls within what is known as an International Class. These are used by the examining attorney to determine if your mark, as used in connection with certain goods and services, may create a likelihood of confusion with another mark due to the goods/services with which it is used. While it is critical to know which International Class(es) will be used when performing the clearance search, the number (e.g. 001) is less important than the actual identification of goods/services. Be less concerned with the International Class initially. Choose the goods or services that most accurately apply to your mark, but know that the number of International Classes affects the filing fee of the trademark application.

Tip: Using the USPTO's Acceptable Identification of Goods and Services Manual will take the guesswork out of which International Class best applies.

Being aware of the fact that you will have to make the three decisions outlined above will help you prepare for the trademark application process. In addition, what you ultimately decide will undoubtedly affect the registrability and enforceability of your mark. Choose wisely.

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