LEGAL GUIDE
Written by attorney Brian A. Hall | Jan 27, 2011

Three Ways to Increase Your Chances of a Successful Trademark Registration

This guide lists three ways you can enhance the likelihood of your trademark application with the United States Patent and Trademark Office (USPTO) being accepted. Put another way, if you properly follow these three guidelines, you will be in a better position to successful become the owner of a trademark registration and be able to use the coveted (R) symbol with your mark.

  1. Have a Trademark Availability Assessment/Trademark Clearance Done.

A trademark availability assessment, sometimes referred to as a trademark clearance, is done to understand whether (1) your proposed mark is likely to be successfully registered and (2) your proposed mark, even if registered, could subject you to claims of a trademark infringement. Why spend the resources to identify a mark and begin branding your goods or services only to find out someone else has rights that would preclude a successful trademark registration, lead to the dreaded cease and desist letter, or, even worse, cause you to be a named defendant in a trademark infringement lawsuit. A proper search will attempt to mimic what an examining attorney at the USPTO looks at when deciding whether or not allows your mark to proceed through the registration process, namely pending and existing marks in the USPTO. It should also look at pre-existing uses since others may have what are known as common law trademark rights. Finally, it should give some insight into whether or not the mark is distinctive enough to qualify for trademark registration. Ultimately, a trademark availability assessment will allow you to make an educated decision, understanding what risks exist, about whether or not to use the mark and to pursue the benefits inherent in a successful trademark registration.

Tip: If you have multiple options for a potential mark, prioritize them based upon your preference. Start with one search at a time.

  1. Choose a Distinctive Mark

In order to have trademark rights, the mark must be distinctive. This is not an easy determination for a lay person, and it is often subject to debate amongst even the trademark attorneys. That said, generic marks and merely descriptive marks are not entitled to registration on the Principal Register of the USPTO. Only marks that are distinctive, namely those that are suggestive, arbitrary, or fanciful may be registered. Note that one exception is what is known as marks that have acquired distinctiveness due to, among other things, use over time, extent of use, etc. Regardless, while there is always a balance between having consumers understand what you sell or offer and the use of a mark that conveys little about what you sell or offer, the USPTO has its requirements. So, if you are looking to choose a mark, choose wisely. If you have been using a mark and want to register it, there may be hope even if your mark is arguably descriptive.

Tip: Do some research to understand what is and is not a distinctive mark since the USPTO requires distinctiveness for registration on the Principal Register.

  1. Be Prepared to Submit a Specimen

A specimen is simply an example of how the mark is actually used in commerce. The critical determination is whether the mark is a trademark (i.e. used in connection with goods) or a service mark (i.e. used in connection with services). This is important because what qualifies as a specimen for a trademark is different than what qualifies as a specimen for a service mark. For example, a printout of a website homepage may suffice for a service mark but not for a trademark. Thus, it is important to understand what needs to be submitted so as to avoid a USPTO Office Action requesting a different specimen. More importantly, if you have not yet used the mark, understanding what you will have to show to the USPTO for the specimen can help dictate your branding and/or packaging efforts.

Tip: A mock-up will not suffice. The specimen needs to show the actual mark as used in connection with the good/service (oftentimes this means showing the actual mark on the good or packaging for the good). The mark as used in the specimen needs to match the mark in the trademark application.

Ultimately, following these three guidelines will put you on your way toward what will hopefully result in a successful trademark registration.

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