5 tips for improving USPTO trademark application odds

The following is a transcript from the video below.

Over the years, I have worked on thousands of trademark applications. First, I reviewed thousands of trademark applications as an examiner, and now in private practice since 1999, I have filed thousands of trademark applications for clients. Based on all of this experience, I want to share with you five important tips to improve the odds of a trademark application’s success.

1: The first tip is conducting a search before applying. You want to know that hopefully the name is unique in your industry. If there are potential conflicts, you want to know about them because that might inform your strategy in the application process, and we’ll get to more on that later.

2: Another important aspect of the trademark application is asserting the proper ownership of the application. Generally, if the business is operating as a corporation, or LLC, even if it’s a very small business, generally, the corporation or the LLC will be the owner and not the individual but an application with incorrect ownership could be null and void or worthless. So it’s important to get the ownership correct.

3: Another important tip for the application process is having the proper description of goods and/or services associated with the mark. This is important because it controls the scope of protection granted by the registration when one issues and it’s important because the wording in the description of goods and services is how others might find your mark when they’re searching for potential conflicts because they might not only search based on the name, but they might search based on descriptions and keywords based on your industry. There’s a fine line in the description process between a broad description that might encompass a full scope versus specific keywords and details that relate to your products or services and particular industry.

4: Another key tip is to file quickly. Don’t wait. Don’t sit on it. If somebody else files before you for a similar name in your field, that’s bound to cause, at a minimum, headaches, expenses and delays. It could even jeopardize your rights in the name altogether, so don’t wait to file. Applicant’s can file based on a bona fide intent to use the mark before actually using it in connection with sales, if necessary.

5: And finally, when picking what to file for, oftentimes, small business is in particular will file for a logo, if they’re filing one application because the logo also has the words in it, and they think that they’re getting more by including the logo. It’s actually the opposite. You actually get more when you file for just the words, if you can, because protecting just the words will cover all fonts and styles and designs for those words. Filing for the words alone also generally has bigger ramifications for social media, domain names, Amazon brand registry, so protecting the words in what’s called the standard character trademark application is generally much more valuable than protecting a logo.

These are five big tips to improve the odds of a trademark application getting approved and becoming registered. Of course, there are many other factors and potential obstacles in the process. I often refer to it as a long and winding road and I recommend that anybody who’s embarking on that journey use an experienced trademark attorney to help navigate the way.