The preliminary work completed before filing the application will have a significant impact on the success of the trademark registration. The more you can prevent potential stumbling blocks and minimize risk upfront, the more likely you are to have a smooth application procedure. Here are some practical methods to assist you to design a trademark strategy that will improve your chances of getting your mark registered.
- Avoid descriptive marks
It’s all too easy to come up with a name that accurately reflects your product or service without having to think too hard. It appears so much simpler to utilize a very simple word as the name for your goods since creativity is hard work. It’s not a good idea! Avoid descriptive markers to save time, money, and worry. One of the most prevalent reasons for trademark application rejection is because the mark is merely descriptive. Think of a word that conveys specific attributes of your product without stating them explicitly. You may even try coining a brand-new phrase (i.e., a fanciful term).
If you strongly believe in the use of descriptive phrases, apply for an acronym if the abbreviation is not already well-known.
- Do a knockout search
You’ll want to avoid any previous trademark applications that might confuse. There are two compelling reasons for this:
- to avoid trademark examining attorney rejections and
- To avoid prospective trademark resistance from trademark owners.
A knockout search reveals the trademark filings that are the most likely to be rejected due to the possibility of confusion. While our knockout search does not include common law trademark use, a number of third-party suppliers do.
- Draft your identification of goods and services carefully
The USPTO prefers that applicants utilize their pre-approved product and service descriptions. Trademark applicants can minimize delays caused by responding to an Office Action that advises changes to the identification of goods/services by doing so.
Furthermore, it’s a good idea to create an identifier that avoids any existing trademark filings that might become a registration roadblock. If your mark is almost identical to a registered mark or a previously filed application, for example, eliminating some descriptors on purpose may lessen the possibility of a probability of confusion denial.
- If necessary, pivot to a new mark
If a thorough search reveals a highly similar mark, it may be preferable to adopt a new mark, especially if your firm or product is still in the early stages of development. It’ll be a pain, but it’ll be a lot less of a pain than having to switch afterward. Imagine spending thousands of dollars on brand development only to be forced to liquidate the existing inventory and start from scratch with a new brand.
- Apply now or later?
When it comes to safeguarding intellectual property, the basic guideline is to file as soon as possible and to be first in line if at all feasible. This applies to both patent and trademark applications. You can even apply for a trademark even if you haven’t sold any goods or services yet. If you delay, you put yourself at a significant disadvantage since your application will be examined after those filed before yours. This not only requires you to wait for the results of previously filed petitions, but it also puts you in the position of having to fight such applications.
Neglecting to develop a trademark strategy has a number of drawbacks.
Unfortunately, many candidates submit their applications without planning ahead of time. They are thus forced to react to problems that may be impossible to overcome. The goal of a smart trademark strategy is to prevent such hassles, or at the very least reduce the chances of rejection to a level that justifies continuing forward.
Even a seemingly successful trademark approach might have flaws.
It is feasible to complete all of the aforementioned steps and have your trademark application authorized by a trademark examining attorney at the USPTO. Everything appears to be in order since your trademark application is then made public for the opposition. It’s difficult to foresee how other parties will respond to a trademark application that has been accepted. If and when your trademark application is challenged, you’ll need to devise a trademark opposition defense plan.