TRADEMARK APPLICATION FILING
A trademark filing will give you national protection for your trademark, as long as you are first in line for the application or you are using the mark. We can file within 24 hours so you can protect the rights to your mark quickly. We first perform a trademark search to see if the mark has already been taken. If not, we can prepare and file the application and reserve your mark.
Once the trademark application is filed, it enters examination where a trademark Examiner reviews the application and looks for confusing, or similar marks in the same field. If the mark is sufficiently unique and defines the wares and services unambiguously, the application proceeds to publication where competitors will have a chance to register an opposition against the mark. If no opposition is filed, the mark proceeds to registration once it is in use. To show use, a Specimen of Use (SOU) must be filed showing the mark on the product or a website.
Do's and Don'ts of Trademark Registration
- Describe as broadly as possible the scope of goods or services you plan to offer.
- Choose a mark that is Arbitrary or Suggestive - marks that do not describe or suggest the nature of the product or services. For example, a made-up word or a word that the consumer must use imagination to identify the product or service is a stronger mark. “Exxon” is an example of a made up, or arbitrary, mark for gasoline. Coppertone is suggestive mark for sunscreen and sunblock preparations.
- File a 1(b) trademark filing if you have a bona fide intent to use a mark, and would like to reserve the rights to it, but have not actually started selling goods in conjunction with the mark.
- Use the trademark as an adjective, and follow it with the generic term. E.g. GOOGLE search engine, KLEENEX tissues
- Distinguish the trademark from the surrounding text by signifying it with a ®, ™, ℠.
- Make a claim towards goods or services that you have not actually used, or do not have a bona fide intent to use in commerce.
- Choose a mark that is descriptive of or a generic term of your claimed goods or services. These are word marks that are not inherently distinctive. They often directly describe the nature or quality of the goods or services in a way that requires no exercise of imagination by the consumer. For example, Jim’s Bicycle Store would be descriptive mark for a bicycle store owned by Jim.
- File a 1(a) trademark if you have not actually used the mark in commerce yet.
- Use the trademark as a verb e.g. “googling” a name rather than performing a GOOGLE search.
- Use the mark inconsistently. For example do not use the mark with the different spelling or punctuation.
Finally, remember that trademarks are not the name or description of a specific item, but rather the SOURCE of goods or services.