Five basic trademark application tips
By Erik M. Pelton
The trademark application process at the USPTO is generally long, complex, and full of deadlines. Errors have the potential to limit or jeopardize your trademark rights, result in a void application, delay the application process, or result in loss of the non-refundable USPTO filing fees.
When I file trademark applications with the U.S. Patent and Trademark Office (I have filed more than 3,000), here are 5 tips I follow:
- Search first. Search the USPTO (consider variations in spelling, spacing, and word order) so that you know what potential obstacles lie in front of the application. Of course, a comprehensive clearance search should be done as well because someone using a similar mark prior to you in a related or competing industry, even if they do not have a registration, is a significant potential problem.
- Words are generally more important than designs. A registration for a design technically covers just that design. A registration for words (a “standard character” trademark) covers all variations of the wording. In other words, when you register a logo you can only use ® next to the logo. When you register words, you can use ® whenever those words are used - in text, in logos, and more. Registering words alone will also provide better protection regarding domain names and usernames. Note that creative and distinctive logos should be protected, but they should be generally be protected in a separate application. But while generally protecting wording is more important, sometimes the best registration strategy - due to descriptiveness issues or potential conflicts - may be to file only for a design.
- Black and white is better than color. A large majority of the time, it makes sense to file in black and white, which protects all colors, rather than to technically protect only the color scheme provided in a color image. Of course, when color is integral to the brand, it may make sense to file in color - or to file two applications, one black and white and one covering particular colors.
- Be Patient. It takes the USPTO about 3 months on average to open a new application and review it for the first time (and this is much better pendency than in the past). In general, when filing based on use of the trademark in commerce, the entire registration process takes about 1 year - and can take far longer if there are hiccups in the process or a “suspension” of the application pending the outcome of some other earlier filed applications.
- Check the status. To make sure the process is completed as quickly as possible, it is advisable to stay on top check the status every month or so - at a minimum - via the USPTO website to ensure that a correspondence from the USPTO - generally via email - was not lost or missed. Our custom built internal software checks the USPTO status for each application we handle every single day - and is a savior because on occasion USPTO emails get bounced, or physical mailings get lost, delayed or sent to the wrong address. I have also created a free cloud-based tracking tool that anyone can use, sofTMware (www.softmware.com).
The “road” to registration is full of bumps, potholes, detours, wrong exits, and toll booths. The end of the “road” that results in a trademark registration is worth the trip to strengthen a brand, create tangible intellectual property assets, and make issues with infringers generally much easier, quicker, and cheaper to resolve. When embarking on the application trip, keeps these tips in mind and remember that the guidance of an attorney “chauffeur” who has navigated the course many times before will make the ride much safer!
© Erik M. Pelton. All rights reserved
