Filing and Registering a Trademark
You’ve decided to register a trademark with the United States Patent and Trademark Office. After countless hours searching the internet, researching the filing process, and debating whether to hire an attorney, you’re still feeling unsure about what steps to take. You’re not alone—navigating the trademark process can be complex, and knowing where to start can feel overwhelming.
1. Not all attorneys advertising trademark services are the same.
Not all trademark attorneys are the same. Thousands of attorneys advertise trademark filing services, but beware: attorneys who focus on litigation, general law, estate planning, family law, or business law may have only limited experience with trademarks. While they may have filed a few applications, they often lack the in-depth, practical knowledge needed to navigate the complexities of trademark law.
Working with an intellectual property attorney who specializes specifically in trademark law—someone who has handled hundreds of applications and understands the nuances of trademark examination—can make all the difference. A dedicated trademark attorney will anticipate issues, craft stronger applications, and skillfully navigate the trademark prosecution process, saving you valuable time, reducing costs, and increasing the likelihood of successful registration. Don’t risk your brand’s protection with generalists; choose a trademark expert who knows the system inside and out.
When establishing a brand, one of the most crucial decisions you’ll make is choosing a name that resonates with your audience, represents your vision, and is legally protectable. A strong, trademarkable name can set your brand apart and provide you with exclusive rights to use it in your industry. Here’s a guide on how to choose a name that’s not only memorable but also legally trademarkable.
2. Understand What Makes a Name Trademarkable
A trademarkable name is distinctive, unique, and has the potential to identify your brand in the marketplace. It should not be too similar to existing trademarks, generic in nature, or merely descriptive of the goods or services you offer. The U.S. Patent and Trademark Office (USPTO) categorizes trademarks into different types based on distinctiveness:
- Fanciful Marks: These are completely made-up words, like “Kodak” or “Xerox.” They offer the strongest level of trademark protection.
- Arbitrary Marks: These are common words used in an unrelated context, like “Apple” for computers. They’re distinctive and offer strong protection.
- Suggestive Marks: These names hint at the nature or quality of the goods, like “Netflix” for an online streaming service. They require consumer imagination and can be trademarked.
- Descriptive Marks: Names that describe the product or service directly, like “Best Auto Repair,” are generally harder to trademark unless they’ve acquired secondary meaning through extensive use.
- Generic Terms: These cannot be trademarked, as they simply describe the product or service (e.g., “Bread” for a bakery).
Aim for a name that falls into the fanciful, arbitrary, or suggestive categories to increase your chances of obtaining a strong, enforceable trademark.
3. Brainstorm Unique and Memorable Names
Start by brainstorming names that reflect your brand identity and values. Consider word combinations, plays on words, invented terms, and even words in other languages. Think about how the name will resonate with your target audience and stand out from competitors.
Tips for brainstorming:
- Focus on words or phrases that evoke a feeling or idea rather than a literal description.
- Experiment with blending words or creating new ones.
- Test the name’s sound and appearance; it should be easy to pronounce, spell, and remember.
4. Conduct a Preliminary Search
Before getting too attached to a name, conduct a preliminary search to ensure it isn’t already in use. This can save you time, legal fees, and potential rebranding down the line. You can start with a basic internet search and then move on to more thorough resources.
Preliminary search tools include:
- USPTO Trademark Electronic Search System (TESS): Search for existing trademarks to see if similar or identical names are already registered or pending.
- State Business Registries: Check your state’s registry to ensure the name isn’t being used by a business in your industry.
- Domain Name Availability: Verify if the domain name for your preferred name is available to secure online presence.
5. Evaluate Your Top Choices for Distinctiveness and Protectability
Once you have a list of potential names, evaluate each for its distinctiveness and ease of trademarking. Consider how unique each name is within your industry and whether it aligns with the fanciful, arbitrary, or suggestive categories.
- Avoid Descriptive Names: If the name merely describes the goods or services, it’s less likely to qualify as a strong trademark.
- Check for Translations and Connotations: Ensure that your name doesn’t have unintended meanings in other languages or regions, especially if you plan to go international.
6. Work with a Trademark Attorney for a Comprehensive Search and Evaluation
Once you’ve narrowed down your list to a few strong options, it’s advisable to work with a trademark attorney who can conduct a thorough search and provide legal guidance on the strength of each name. They’ll help you navigate potential conflicts with existing trademarks, assess the risk of infringement, and determine if any additional steps are needed.
7. File Your Trademark Application
When you’re ready to commit to a name, your attorney can help you file a trademark application with the USPTO. The application process includes:
- Submitting Details: Provide details about your trademark, including the name, logo (if applicable), and the goods or services it will represent.
- Class Selection: Choose the correct class(es) for your goods or services. Each class represents a specific category, such as clothing, software, or food products.
- Filing Basis: Indicate whether you are currently using the trademark in commerce or intend to use it in the future.
After filing, the application will go through an examination process, during which the USPTO will assess it for compliance and potential conflicts. If there are no objections, your trademark will be published for opposition, allowing others to contest the trademark before it is officially registered.
8. Build Your Brand with Confidence
Once your trademark is approved, you’ll gain exclusive rights to use the name within your industry, protecting your brand’s identity and value. Be sure to use your trademark consistently and monitor for any potential infringements to maintain your rights.
