Trademark application: What is the most important factor in registering a mark?

Focus on What Matters Most In Filing Your Trademark Application

For many businesses thinking of registering a trademark, cost is the biggest factor. It is often the first and only question asked of our trademark filing services. I’m not surprised. Trademark filings have become commoditized. So it’s no surprise that would-be filers are searching for the lowest cost trademark filing services. But, should cost be the biggest factor in choosing a trademark attorney or service? What should be the most important factor in filing a trademark application?

Need to register your trademark? Contact US patent and trademark attorney Vic Lin at 949-223-9623 or email to see how we can help obtain your trademark registration.

What is the #1 factor in hiring a trademark attorney?

If forced to choose only one factor, I would say that the number one quality in choosing a trademark attorney is to go with someone who will reduce the risk of USPTO trademark rejections. Sure, you can hire a trademark filing service to file your trademark application for dirt cheap. But what will you do if and when your trademark application is rejected?

Known as an Office Action, a trademark rejection can lead to 6-12 months of delay. A second Office Action can increase the delay to well over a year.

Even worse, a prior-filed application for a similar mark can lead to a suspension of your application that can last years.

So is the cost savings worth waiting 8-12 months to get an initial refusal from the trademark examiner?

Is time more important than money when it comes to registering trademarks?

If you could put a monetary value in saving 8 to 12 months’ worth of time in registering a trademark, what would the dollar amount be? How much more would you pay to obtain a trademark registration a year earlier?

It seems that many potential clients completely overlook the expense of delays in the trademark application process. What if a knockout search could have caused you to pivot to a new mark before filing your trademark application? What if an experienced attorney could have warned that a particular mark might be too descriptive or even borderline generic for the goods or services you wish to protect?

What are the two biggest risks to avoid before applying for trademark registration?

Hands down, the most important thing you can do before filing a trademark application is to reduce your risk of rejection. How?

Avoid or reduce the risk of the two most common types of trademark refusals:

  1. Minimize the chance of a likelihood of confusion refusal by avoiding marks that may be confusable with registered or prior-filed trademarks for similar goods or services; and
  2. Avoid a merely descriptive refusal by using more arbitrary or suggestive words. Better yet, make up your own words or terms. If you must use a descriptive word in your mark, combine it with more unique terms to create a distinctive combination.

You will greatly improve your probability of success in registering a mark by avoiding descriptive words and similarities to live trademark registrations and pending applications.

What is the second greatest factor in choosing a trademark attorney?

Many Do-It-Yourself (DIY) trademark filing services and non-attorney companies might be able to help their customers register their marks. But at what cost? I have seen so many trademark filings where critical errors were made during the application process which would render the resulting registration void. Imagine going through all the hassle of registering a trademark only to find out that your registration is invalid.

So the second greatest factor in choosing a trademark attorney is avoiding mistakes that can lead to an invalid registration. How do you spot such experienced trademark attorneys? When you discuss your trademark with a prospective attorney, does he or she grill you with tough questions on usage? Do the issues of confusion or descriptiveness ever come up in your communications?

Need to file a proper trademark application?

Reach out to patent and trademark attorney Vic Lin at or call (949) 223-9623 to see how we can help you avoid or minimize rejections in your trademark application. Let’s explore how we can help you save time and obtain a trademark registration sooner.

How useful was this post?

Click on a star to rate it!

Thank you for rating my post!

We want to do better.

Could you tell us what was missing in our post?

Innovation Capital Law Group
Ready to Slay Goliath?

What IP do you need?*

What IP do you need?*

(Check all that apply)

Your Name*

Your Name*

Your Email*

Your Email*

Your Phone Number

Your Phone Number

Design Patent Money-Back Guarantee
Get your design patent allowed or attorney's fees refunded. Call or email Vic to see if your design qualifies.

Not sure where to start? Email Vic at

Copyright © Vic Lin 2023