Registering a new trademark with the U.S. Patent and Trademark Office can be a long and complex affair, and many business owners often find themselves caught in various pitfalls.
Whether that's being stuck in a round of office actions or being unsure about what trademark class to file under, there's a lot of things to know about this deceptively simple process.
Further, errors in your application could potentially limit or jeopardize your trademark rights, delay your application, or even result in the rejection of your application completely.
For this reason, it's wise to follow industry best practices when you choose to file your trademark application.
When a new client hires our firm to register a new trademark, we leverage a few basic tips and strategies to help make the entire process easier:
- Perform a Thorough Trademark Search. To begin, you should take the time to search the USPTO's trademark database (TESS) so you know what to look out for when filing your trademark application. Often, it's smart to search for your proposed business name, along with any variations in spelling, spacing, word order, or other slight variations to your mark. This will also allow you to check and see if there are any confusingly similar businesses in your industry.
- Prioritize Words and Names over Designs. Often, it's smarter to register a trademark for a word or a name rather than a design (such as your logo). This is because registering a name will cover all variations of that name or word, while registering a design or logo will only cover that specific design. Registering a name or word also provides you additional protections in common spaces your business may exist online, such as in domain names, usernames, social media accounts, email addresses, packaging, or anything else that's based on your business's name. Of course, you can always file for both trademarks, but you should always talk to a lawyer first to ensure you aren't double-dipping in regards to your business's brand.
- Consider Your Colors. In most cases, it makes more sense to register your trademark in black and white (which protects all colors) rather than registering using your brand's color scheme. This advice applies to both design and text registrations, as black and white makes the most sense for both, while also protecting the largest number of color options.
- Be Patient. The trademark application process can take several months, or even years, to complete, so you'll want to remain patient during the process. In general, you should expect the entire registration process to take somewhere between 9 and 15 months, depending on the quality of your application, the number of office actions you receive, and a number of other factors.
- Check on Your Application Monthly. On the flip side, it's highly recommended that you check your application's status at least every month to ensure there aren't any problems such as a lost or missed email. Missing an office action or a similar correspondence could potentially result in the rejection of your application, so it's critical that you stay on top of things as much as possible.
- Object to Infringing Brands. After you successfully register your trademark, it's important that you take steps to protect your name and logo from infringing businesses. Failing to contest and resolve any cases of potential trademark infringement could weaken your brand as a whole and possibly even sink a potential future infringement suit brought against the other party.
Trademark registration can be a daunting task filled with bumps and twists that you might not expect. However, the payoff is most definitely worth it.
By registering your brand's name and logo as a trademark, you're taking an important first step in protecting your business on the national level.
Trademark registration gives you additional rights and powers over how your branding is used, and can help you fight instances of infringement both faster and easier than if you never registered in the first place.
If you have any questions about trademark law or IP law in general, please feel free to call our office at (804) 477-1720 to speak with an attorney today.
