The following is an edited transcript of my video 25 Trademark Application Tips.
- Choose wisely. Choosing a distinctive creative name is very important.
- Know about the spectrum of trademarks, which is going to help you choose wisely.
- Do a clearance search from the beginning before you begin the registration process.
- Use an attorney. We know that using an attorney leads to better results in general and has many benefits.
- Understand the implications of ownership and who owns the trademark and the trademark filing with the USPTO.
- Know about the different types of a basis for your application, whether it’s use in commerce, intent to use, a foreign filing. These are important distinctions in the application process.
- Make sure you understand about proper evidence of use and specimens required by the USPTO.
- Understand the signature for the application and who is eligible to sign on behalf of the owner.
- When signing there’s a declaration involved. Understand what goes into that declaration and what it means. It is important.
- Know about the domicile address requirement from the USPTO. If you’re using a P.O. box or a mailbox drop, you are probably going to have to provide a domicile or residential address as well. You can, however, hide that from the public records.
- Know the difference between applying for words versus a logo and the pros and cons of doing those.
- Understand the very important role that the description of goods and services and classification of them plays in the application.
- Understand what a disclaimer means in an application and whether you might have to address that in your application.
- Understand translation requirements if your application includes any foreign wording.
- Beware of scams. We have much more content devoted fully to warnings about scams. You need to know about scams when you’re applying to register a trademark.
- Before you apply to register your trademark, register whatever domain name is important to you that you can get. Register them before your trademark application gets filed and becomes a public record because we’re seeing other people go out and pick up those domain names.
- File early. It’s a long and winding process—over a year on average—to get trademark registration and there are many benefits to starting that process early.
- Know the difference between the different types of application forms at the USPTO and the complexity of the forms themselves.
- Know about the uspto.gov account system. You need an account to file an application, you need to go through the ID me verification process, and you need to understand those things before you can begin an application.
- You need to understand the different steps along that road from application to registration
- Use that ® when you’ve completed the registration process to show off your hard work and the value of your brand.
- Know that trademark registration expenses are business expenses and therefore tax deductible.
- Know that registering with the USPTO conveys nationwide protection in all 50 states and US territories.
- Monitor the status of your application and any deadlines and understand how that works. The USPTO has great information systems, but you need to understand how to use them to be able to monitor the status and the deadlines.
- Know about office actions—when the USPTO denies an application or requests more information—and what goes into responding to an office action and its timing.
