How to develop a trademark strategy that will improve chances of registering your mark

A successful trademark registration will depend a great deal upon the preliminary work done before filing the application. The more you can avoid potential obstacles and reduce risk upfront, the greater the chance of a smooth application process. Here are practical steps to develop a trademark strategy that can help optimize chances of successfully registering your mark.

1. Avoid descriptive marks

It’s tempting to come up with a name that describes your product or service without having to be creative. Creativity is hard work, and it seems so much easier to use a very simple term as the brand for your product. Don’t do it! To save yourself time, money and stress, avoid descriptive marks. Rejections of trademark applications on the basis that the mark is merely descriptive is one of the most common refusals. Get creative and think of a term that suggests certain qualities of your product without spelling it out. You might even consider making up an entirely new word (i.e., a fanciful term).

If you feel strongly about using descriptive terms, consider applying for an acronym assuming the abbreviation is not already well known.

2. Do a knockout search

You will want to steer clear of any prior trademark filings that might present a likelihood of confusion. There are two good reasons for this:

  1. Avoid rejections by the USPTO trademark examining attorney; and
  2. Avoid potential trademark opposition by trademark owners.

A knockout search identifies the closest trademark filings that present the biggest risks of a likelihood of confusion rejection. While our knockout search does not cover common law usage of marks, various third party vendors offer such search reports.

3. Draft your identification of goods and services carefully

The USPTO wants applicants to use their pre-approved descriptions of goods and services. By doing so, trademark applicants can avoid delays that would otherwise from responding to an Office Action that suggests amendments to the identification of goods/services.

Moreover, it may be wise to craft an identification that avoids overlap with any prior trademark filings that could potentially become an obstacle to registration. For example, if your mark has a borderline similarity to a registered mark or prior-filed application, purposely avoiding certain descriptions may reduce the risk of a likelihood of confusion refusal.

4. If necessary, pivot to a new mark

If a knockout search uncovers a highly similar mark, it may be best to adopt a new mark especially at the early stage of your business or product development. It’s a hassle, but it will be significantly less of a burden that having to switch later on. Imagine investing thousands in brand development and then having to liquidate existing inventory and start over with a new brand.

5. Apply now or later?

The general rule in protecting IP is file as soon as possible and be first in line if possible. This is true of both patent and trademark filings. You can even file a trademark application without yet selling any products or services. If you wait, you put yourself at a huge disadvantage of having your application reviewed subsequent to those applications filed before yours. This also forces you to wait for the outcomes of the earlier-filed applications, but also imposes the potential burden of having to oppose those applications.

Pitfalls of not having a trademark strategy

Unfortunately, many applicants file first without any strategy. They then find themselves reacting to challenges that might prove impossible to overcome. The purpose of a wise trademark strategy is to avoid those headaches, or at least minimize the risks of rejection to an acceptable calculation that would justify moving forward.

Even a seemingly good trademark strategy can have shortcomings

It’s possible to do all of the above and see your trademark application approved by the USPTO trademark examining attorney. All seems well as your trademark application is then published for opposition. Sometimes you can’t predict how third parties might react to your approved trademark application. If and when your trademark application is opposed, then you’ll need to develop a strategy for defending a trademark opposition.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
If you are a startup or small business, we want to help. Our mission is to equip entrepreneurs with solid IP rights that facilitate funding, growth and sales. Let's get to work! Direct: 949.223.9623 | Email: vlin@icaplaw.com
Vic Lin

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