Selecting and developing a strong trademark is often vital to the creation of a successful brand. A trademark identifies your business and allows purchasers to quickly connect your products or services to their source. A single word (e.g. Nike), symbol (e.g. McDonald’s Arch), color (e.g. Coca-Cola red), shape (e.g. iPod shape), sound (e.g. the NBC Chimes), or even smell, can enable a purchaser to identify the source of a product in just seconds. But choosing the right trademark can be an overwhelming task. The following six steps should provide a helpful list of things to consider when picking and registering a trademark.
1. Is a trademark right for you? Trademarks, copyrights, patents, and trade secrets are all different and unique forms of intellectual property. A trademark is often a brand name or logo that identifies the particular origin of goods or services. Since trademarks identify source, trademarks must be placed on or used in connection with the products or services they identify. For example, use of a domain name only as part of a web address does not qualify as source-indicating trademark use, but other prominent use of the mark, apart from the web address, near the goods or services, may qualify as trademark use.
2. Select a trademark with care. Not every mark may be registered and the strength of a trademark can vary widely. While most businesses want to explicitly identify their products or services (e.g. Fried Chicken Kitchen), words used to describe an entire category of goods or services are known as “generic” and cannot be registered. For that reason, when picking a trademark it is best to be creative. Before you file a trademark application you should consider: (1) whether the mark you want meets the guidelines for registration, and (2) how difficult it will be to protect your mark based on the strength of the mark selected.
3. Search the USPTO database. Before 100% committing to your trademark, search the USPTO database to see if anyone else has already registered the word, symbol, color, shape, sound, or smell you like. If other businesses have registered the same or similar marks for your goods or services, then there is strong chance your registration may be refused.
4. File online. The USPTO has an online system, the Trademark Electronic Application System (TEAS), which you can use to apply for your trademark. You can access the online application from the USPTO website. When filing your application, remember two things: (1) The processing fee is nonrefundable, so make sure you review everything before you press “submit”, and (2) all information included in your application will be publicly available, so you may want to stay away from including your home address.
5. Consider Hiring a Trademark Attorney. Selecting and registering a trademark is a complicated process, so you should certainly consider hiring an expert in the field. trademark attorneys have professional insight and experience, which will simplify the application process and can end up saving you time and money in the end. They can be particularly helpful during the trademark selection phase. So before you go too far, consider whether you should consult a trademark attorney. For more information on selecting a trademark attorney check out our blog post from January 19, 2015 “How to Choose a Trademark Attorney.”
6. Monitor Your Application. Once you file your application, it is important to check the status every 3-4 months and make sure you don’t miss a filing date. Applications may be monitored through the Trademark Status and Document Retrieval System (TSDR). Just plug in the mark, owner’s name, or serial number to look up your file and check for any updates.