Trademark strategy: 5 steps to optimize chances of registration

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.

How useful was this post? (Did you find the information you needed?)

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?

Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

Follow us

Copyright © Vic Lin 2023