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

What is the #1 factor in filing a 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? What is the #1 thing to consider when you’re hiring a trademark attorney?

If forced to choose only one factor, I would say that the number one factor 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 only $100. 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 6-8 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 6 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 is the number one thing to do before filing a trademark application?

Hands down, the most important thing you can do before filing a trademark application is to reduce your risk of rejection. How? You can reduce your risk of a trademark rejection in at least two ways:

  1. Reduce the risk of a likelihood of confusion refusal by avoiding a mark that might be confusable with a similar mark for similar goods or services;
  2. Avoid the risk of a merely descriptive refusal by using more fanciful or arbitrary words. Better yet, make up your own word or terms. If you must use a descriptive word in your mark, add more unique terms to come up with a distinctive combination.

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’ve seen so many trademark filings where critical errors made during the application process 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.

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