Get It Right the First Time: Avoiding Trademark Pitfalls With an Appropriate Strategy

Get It Right the First Time: Avoiding Trademark Pitfalls With an Appropriate Strategy

by Joe Runge, Esq., June 2016

Patents and copyrights have set expiration dates. Generally, twenty years from a utility patent's filing, or 70 years from the death of an author, a patent or copyright registration is no longer enforceable. Trademark registrations, however, can last as long as you keep them active and in use, and it's best to register right from the start.

Unlike copyrights, which can be easy and inexpensive to register, registering a trademark can be a complicated process that requires legal expertise and greater financial investment. It's common for the U.S. Patent and Trademark Office (USPTO) to refuse applications and argue: that a similar trademark already exists, that the trademark protection being sought is too broad, or that the mark is too generic.

There is a lot you can do both before and after you file your trademark application to improve your chances of securing the protection you need. Follow these three steps to get your trademark registration right—the first time.

1. Conduct a thorough search.

The first thing to do is conduct a comprehensive trademark search. It is important to know all the uses of marks like the one you want to protect—whether used by your competitors or by businesses outside your field—because they all can influence the trademark protection available to you.

You can conduct an initial search of registered trademarks online for free. TESS, the USPTO's Trademark Electronic Search System, has multiple functions that allow you to search all registered trademarks, by word or by design. Though possible to conduct a search yourself, the results are not likely to be as thorough as those from an attorney or trademark search company that specializes in such services.

Remember that a trademark protects the use of a word, phrase, or logo for a particular class of goods or services. It does not grant universal ownership of the mark. Two companies may be able to use the same word, image, or logo if they are engaged in different kinds of businesses. Even if another company is using a trademark close to the one that you want to protect, you still may be able to use it.

TESS is just a start. It is also important to conduct a comprehensive search at the state level. Even unregistered trademarks can impact your ability to register your trademark, and it's vital to search such common law trademarks for conflicts. If another business is using an unregistered trademark that is like the one you want to protect, then you may have a problem.

Once a comprehensive search has been completed, it is often very helpful to have a trademark attorney analyze the results and provide an availability opinion. Conflicting marks may not always be obvious—they may not be identical, and they may not be in the same class of goods and services.

If you get the search and analysis right, you will save yourself the expense of surprises during trademark registration and beyond. With a better strategy, your application will be better, your mark will be stronger, and you're likely to spend less money overall.

2. Get beyond descriptions.

Trademarks offer stronger protection when they are less descriptive of the goods or services they are associated with. It may seem counterintuitive, but words that describe your product tend to be harder to protect. Registration of a descriptive mark is often denied, because of the mark's inability to identify the source of a good or service.

Stronger marks consist of those that are truly distinctive, and do not merely describe an inherent property of a product or service. Generic descriptions are not distinctive, making them hard to get approved, and harder to protect. Your trademark must identify what you sell as coming from you.

A good trademark strategy quickly goes beyond describing a product or service and focuses on distinctiveness. The more distinctive, the stronger the mark.

3. Align your goals.

Registering a trademark is an important business decision. The expense of registering a trademark has to be justified by its value. Consider the trademark's scope. When you register your trademark, are you protecting the mark for textiles—class 024, leather goods—class 018, or for both? The more classes you register, the more you will spend.

The scope of classification is one example of how the legal strategy you take influences the business decision of registering the trademark. Do you want to spend the money to register in multiple classes? Do you want to protect the mark for classes that you plan to expand into later? Setting that strategy ahead of time is one way to get the right trademark protection while spending less money.

Getting your strategy wrong can compromise the value of the trademark registration. Your registration could be too narrow and not cover all the things you sell or want to sell in the future. Or your registration could be too broad and balloon your legal fees.

To get it right, you need to make sure that your legal strategy is informed by your business goals. The closer the fit, the more appropriate your protection—and your expenses—will be.

Ready to register a trademark? LegalZoom trademark registration services allow you to register a trademark easily and affordably. Get started by answering a few questions. We'll work with you to assemble your application, and conduct a trademark search to reveal any potential conflicts. Then, we'll file you completed application with the U.S. Patent and Trademark Office (USPTO).