We receive trademark questions all the time. Mostly from start-ups who from the gate want to protect their name and brand. With so many ways to reach an audience, new brands surface everyday. With today’s technology, it is much easier to get published, sell goods, and even go viral.
There are as many ways to get copied or poached today. If you have a unique product to sell, offer online services, are starting a business or nonprofit, or you want to reach celebrity status on social media, you may have thought about trademarking your name. Join the club. You’re not alone! Many people have taken this step.
For example, Facebook is a registered trademark, as is one of Nike’s most famous trademarks “Jumpman”. How you can decide is your name is worth protecting with a trademark? Just so you know, the trademark process can take up to 10 months at a minimum, in some cases, years. So be patient. Here are some tips for trademark success.
1. Select or Create a Strong Mark
The more distinctive your mark is, the easier it is to trademark.
For example, if you want to trademark a business name or persona you can get trademark protection for a made-up name (like “IBM”), an existing word that’s usually not associated with your product or service (like “Dell” computers), or a name that suggests something about your product or service without actually naming it (like “Amtrak” trains).
2. Choose a Mark That Isn’t Similar to Another Mark
If marks look alike and are being used to identify similar goods and services, it can be confusing. You can search for similar trademarks in the trademark online database, but a deep search should also include state trademark databases, business directories, and ordinary internet searches.
It can be hard to objectively evaluate whether there’s a likelihood of confusion between your mark and someone else’s. DVA’s trademark specialists can help you with this step or you can hire a trademark attorney.
3. Begin Using Your Mark in Commerce As Soon As Possible
When you file your application, you’ll have to choose a filing basis: “use in commerce” or “intent to use.” If you are currently using your mark, you can file under the use in commerce basis, and you’ll have one less step to complete before your mark is registered.
If you are not yet using your mark, you’ll have to file under “intent to use.” At the end of the registration process, you’ll receive a Notice of Allowance, but your mark will not be officially registered until you file a Statement of Use and submit a specimen of your mark. You’ll have six months to file a Statement of Use, but that time period can be extended.
4. Submit a Complete and Accurate Trademark Application
Take your time and make sure you have fully completed the application, have chosen the correct type of goods or services, and have followed all instructions for submitting a picture and specimen of your mark.
If you receive an office action because there is a technical or procedural problem with your application, reply immediately. For example, you may have improperly identified the goods or services associated with your mark, or you may not have submitted an acceptable specimen of your mark. While these sorts of problems are relatively easy to remedy, they do slow down the process.
The trademark registration process can be frustratingly slow, but if you choose a strong mark, do your research and submit a strong application, you’ll greatly reduce the chance of Office actions and oppositions.
5.) If You Receive an Office Action, Respond Promptly and Thoroughly
If the USPTO sends you an Office action, your trademark application won’t move forward until you respond. You’ll usually have six months to submit your response, but if you want your application to move quickly, you should respond immediately.
Be thorough and accurate. Some Office actions raise issues that require complex legal arguments. It is important for your response to address each of the issues in the Office action completely. Otherwise, you will likely receive a final office action that gives you fewer options to respond. Our DVA trademark specialists can assist you with your response.