Building A Brand with Trademark Registrations

Trademarks are often one of a business’s most valuable assets and a strong trademark can be a key to the success of the business. We each encounter thousands of brands every day attached to all kinds of different goods and services. So how do you go about building a strong brand you can grow and protect for years to come? In this article, we’ll review what trademarks are and what they protect, the legal framework for trademark rights in the United States, and the process of applying for, obtaining, and maintaining federal trademark registrations.


What Are Trademarks and Why Are They Important?


Trademarks are words, symbols, phrases or designs (sometimes even colors and sounds) that identify a product or service as originating from a single source. Trademark owners have the exclusive right (within certain limits) to use a trademark in connection with the products or services covered by the mark. The ability to keep other people and businesses from using the same or confusingly similar marks assures trademark owners that only they receive the benefits of investing the time and resources to create a brand - like recognition, loyalty, goodwill, and marketing efficiencies.


Trademarks also serve a second dual purpose of allowing consumers to distinguish one business’s products and services from those of its competitors. While a consumer might not know the identity of the source, they can rely on that mark for goods or services that they expect a consistent level of quality from. When consumers purchase a product from Apple or Nike, they have a very good idea of the quality they can expect from those products.


The Legal Framework of Trademark Protection in the U.S.


In the United States, trademark rights exist at 3 levels: federal, state, and common law. At the federal level, trademarks are protected primarily under the Lanham Act. The US Patent and Trademark Office (USPTO) is the federal agency that administers the Lanham Act and regulates registration of trademarks on the federal trademark register. At the state level, trademarks are protected by common law principles of unfair competition and, in some states, by statute. Rights in unregistered trademarks, known as common law rights, are typically quite limited in scope and usually extend only to the close geographic area where the mark is being used.


In many countries, trademark rights are granted to the first person or company to file a trademark application for a particular mark, regardless of whether it is currently being used. In the U.S., however, trademark rights are granted to the first person or company to actually start using the trademark in commerce in connection with a product or service.


While a federal application can be filed in the U.S. based on a legitimate intent to begin using a mark in the near future, registration is not granted, and no rights attach to the mark until the applicant begins using it in connection with the products or services specified in the application.


The Scope of Trademark Protection


In general, trademark protection extends to the scope of use, which is defined both geographically and by the goods or services used in connection with the mark.


1. Geographic Scope:

Unlike common law rights, which are limited to the immediate geographic region where the mark is being used, a trademark registered on the federal register gives the owner the exclusive right to use the mark nationwide.


 If you expect to use your trademark(s) outside the U.S., you should consider conducting trademark clearance searches and registering the mark(s) in the foreign jurisdictions where you will be using them. Deciding where and how to register marks internationally can be a very complex undertaking and you should always consult with a qualified trademark attorney to learn about the process, costs involved, and strategies.

2. Classification of Goods and Services

Generally, trademarks protect and can be registered for the specific goods and services they are being used in connection with. There are 45 different “classes” of goods and services that are recognized by the USPTO and trademark owners register their marks in the classes that correspond to the products or services they offer.


3. Likelihood of Confusion

The “likelihood of confusion” standard for trademark infringement allows trademark owners to prevent others from using a similar mark on goods or services that are similar or related, but not necessarily identical, to those of the trademark owner. For instance, if you have a federal registration for “Discount Den” in connection with “auto repair services,” you may have a strong argument for preventing someone else from later registering “Savings Den” in connection with a business that does car washing and detailing.  


Requirements for Federal Trademark Registration


1. Use in Commerce

As previously discussed, trademark rights in the U.S. are obtained by being first to use the mark in commerce in connection with the relevant goods or services. Under the Lanham Act, “use in commerce” means actually using the mark in the ordinary course of trade. This could include, among other things, selling goods with the mark displayed on the product packaging or on a tag/label, on documents associated with the goods, or using it in advertising or sales materials for the goods and services being offered.  


2. Distinctiveness

To be protectable as a trademark, a word, logo, design or phrase must be distinctive, which means it must be capable of identifying a product or service as originating from a single source. Marks can be evaluated and grouped based on a continuum that goes from highly distinctive to generic. The five general categories along this continuum are: (i) Fanciful; (ii) Arbitrary; (iii) Suggestive; (iv) Descriptive; and (v) Generic. Let’s take a look at each of these in turn.


a. Fanciful Marks

Fanciful marks are terms that are created specifically to function as trademarks and have no other common dictionary meaning. Examples include “Kodak” for cameras and photographic products and “Exxon” for oil and gas.


Fanciful marks are considered to be the strongest marks and provide the broadest trademark protection because the product or service is the only meaning associated with the mark and it is generally easier to prove infringement by other users.


b. Arbitrary Marks

Arbitrary marks are words that do have common meanings, but do not have any connection to the goods or services they are being used with. Examples of arbitrary marks include “Apple” for computers and “Omega” for watches.


c. Suggestive Marks

Suggestive marks suggest a quality or characteristic of a good or service but do not explicitly describe it. There has to be some thought or logical jump of imagination required between the mark and the connected goods or services for a mark to be considered suggestive and not descriptive. Thought, imagination, and perception are required to connect the mark with the product or service. Examples of suggestive marks include “Mustang” for cars and “Coppertone” for sunblock.  


d. Descriptive Marks

A mark is descriptive if it describes a good or service or one or more of its features, such as its ingredients, quality, purpose, or function. Descriptive terms are not inherently distinctive and are not initially entitled to trademark protection because they do not immediately identify the source of a single product or service. However, over time a descriptive mark can acquire distinctiveness as it comes to be associated in consumers’ minds with a certain source of goods or services. In these cases, the mark is said to acquire secondary meaning and can be protected as a trademark.


Examples of descriptive terms that have acquired secondary meaning include “Best Buy” for a store selling electronics, and “International Business Machines” (IBM) for computers.


Descriptive marks cannot be registered on the Principal Register without a showing of secondary meaning. However, descriptive terms that are capable of distinguishing the goods and services may be registered on the Supplemental Register.

Determining whether a term is descriptive or suggestive is not an exact science and often involves subjectivity. Oftentimes, different arguments can be made for either suggestive or descriptive with regard to a particular mark. Generally, a term is considered suggestive if it requires some thought or imagination to reach a conclusion about the nature of the goods or services offered. On the other hand, a term is generally considered descriptive if it immediately conveys information about the nature of the goods or services.


e. Generic Terms

A generic term is the common or dictionary term for a product or service. Generic terms can never function as a trademark because they do not identify a particular source. For instance, “Auto Repair Shop” and “Grocery Store” can never act as trademarks. A term's distinctiveness needs to be evaluated in the context of the goods and services for which it is used. For example, while APPLE is arbitrary for computers, it is generic for the fruit.


3. No Likelihood of Confusion


The standard for whether trademark infringement exists is “likelihood of confusion.” A likelihood of confusion exists between 2 marks with unrelated owners if consumers are likely to believe that the products or services come from the same source. The main factors to consider when determining whether there is a likelihood of confusion are: the similarity of the marks; the channels of trade being used; the relative strength of the marks; the similarity between the goods and services being offered; the intent of the user; and the sophistication of the consumers being targeted by the mark owners.

 

It is important to note that a finding of likelihood of confusion does not require the conflicting marks, or the goods and services on which they are used, to be identical. Likelihood of confusion generally will be found if the marks are similar and the goods or services are related.


4. Eligibility for Trademark Registration Under the Lanham Act


Not all words, symbols, logos, and devices can be registered as trademarks. Certain types of subject matter can’t be registered at all. Other categories of materials may be registered, but only if they meet certain criteria. This second group of categories includes, among others, names, government insignia, descriptive terms, and terms that are primarily geographically descriptive.


The Federal Trademark Registration Process


Assuming the application proceeds to registration, obtaining a federal trademark registration usually takes between one and two years from filing the application. However, timing depends on several factors, including the extent to which the USPTO or third parties object to registration of the mark and the size of the backlog of pending applications.


 The full process generally consists of: 1) Conducting a search and clearing the trademark for use and registration; 2) Preparing and filing the application; and 3) Responding to and addressing issues raised during the application review process.


Benefits of Registration


It is not necessary to register a trademark on the federal trademark register. Federal registration, however, provides the trademark owner with substantial benefits and more expansive rights than those available for unregistered or state-level marks.


1. Principal Register


The advantages of registration on the Principal Register include:


  • Constructive nationwide right to use the mark;
  • Federal court subject matter jurisdiction over infringement and other trademark claims;
  • Statutory remedies for federal trademark infringement claims, including, under certain circumstances: treble damages;
  • recovery of attorneys' fees and costs; Constructive notice of ownership, which eliminates the defenses of good faith use and innocent adoption;
  • The right to use the ® symbol and other notices of federal registration;
  • After five years the registration may become incontestable and be deemed conclusive evidence of the owner's exclusive rights to use the mark;
  • a registration may be recorded with US Customs to stop the importation of infringing, counterfeit, and gray market goods; and
  • A registration may provide a basis for registering the mark in foreign countries.


2. Supplemental Register


Some terms that do not qualify for registration on the Principal Register may be eligible for registration on the Supplemental Register. To be included on the Supplemental Register, a mark must be: Capable of distinguishing the applicant's goods or services; Unregistrable on the Principal Register; and not otherwise unregistrable.


Registration on the Supplemental Register is most common for marks that are merely descriptive where the applicant hasn’t been able to demonstrate secondary meaning. Benefits of registration on the Supplemental Register include:


  • Federal court subject matter jurisdiction over infringement and related unfair competition claims;
  • Registration may be cited by trademark examiners against later applications to register similar marks;
  • Inclusion in trademark search results, which may deter third parties from adopting similar marks; and
  • the right to use ® and other notices of federal registration.


 It is possible to file an application requesting registration on the Supplemental Register from the beginning. However, in most cases, applicants apply for the registration on the Principal Register and amend the application to the Supplemental Register if the USPTO refuses registration based on descriptiveness of the mark. A trademark must be used in commerce or based on a foreign registration to qualify for registration on the Supplemental Register. Applications based on intent to use cannot be filed for or converted to the Supplemental Register until a Statement of Use or Amendment to Allege Use is filed.


Intent to Use Applications


The Lanham Act permits the filing of an intent ­to ­use trademark application for a mark that is not yet being used if the applicant has a legitimate intent to use it for the goods or services listed in the application. The benefits of filing intent ­to ­use applications include: If the mark becomes registered, the filing date of the application is deemed to be the date of first use, providing a priority date that is earlier than the first actual use; and the owner can determine whether the mark is registrable and address any obstacles to registration before making substantial investments in the mark.


Trademark Clearance


Before applying for federal trademark registration or using the mark, the brand owner should go through the trademark clearance and search process. This involves conducting one or more trademark searches to see whether the proposed mark is likely to infringe on any existing rights, analyzing the search results, and getting an opinion on whether the proposed mark qualifies for trademark protection and federal registration and whether there are any risks presented by existing or proposed uses of the mark.


Performing trademark clearance in the initial phases of adopting a new mark allows a trademark owner to avoid or reduce the investment in a trademark that is unavailable for use or registration. It also helps reduce the risk of third-party objections to use and registration of the proposed mark. Lastly, it can help uncover potential issues and risks and allow the application to be drafting in the best way possible to address those issues.


 While a well-structured trademark search should identify the most significant risks of using a mark, trademark owners should understand that no search or clearance process can identify all possible issues. An analysis of eligibility and availability for use and registration requires knowledge of trademark law and is typically performed by an experienced trademark attorney.


Trademark Search


Although the scope can vary, trademark searches generally include a search of: The federal trademark register administered by the USPTO; State trademark registers; various other publicly available publications and databases relating to relevant products and services; and the internet.


A trademark search is usually performed in two stages: a preliminary (or “knock-­out”) search, followed by a comprehensive (full) search, if necessary or desirable.


1. Knock-Out Search


The purpose of a knock­out search is to identify marks that are visually, conceptually, and phonetically similar to the proposed mark and that are being used with the same or similar goods or services. While the scope of knock­out searches is usually limited, they can help a brand owner avoid the expense of a full search if a clearly conflicting trademark is uncovered and allow the brand owner to choose from a selection of alternative trademarks, especially if there are budget concerns.

The scope of a knock­out search is usually limited to information that is free and easy to access online, including online searches of the USPTO database of federal registrations and applications using the USPTO's Trademark Electronic Search System (TESS), basic internet searches for direct hits, and WHOIS domain name registry searches for specific domain names. Brand owners, particularly those planning to rely on social media for advertising, will also benefit from checking to see whether names/handles are available on those platforms (Instagram, Facebook, Twitter, YouTube, etc.).


2. Full Search


Full searches can sometimes be necessary to conduct a more thorough risk assessment of existing registrations, pending applications, and common law uses of similar marks. They involve a more thorough search of federal applications and registrations and cover a wide range of additional publicly available information, including databases of state trademark registrations maintained by state trademark offices and common law uses, including searches of the internet, business/trade name directories, databases of periodicals, domain name registries, and dictionaries.


If the business expects to use the mark internationally, a full search may also include registries and common law uses in selected foreign jurisdictions. Some law firms that specialize in trademark law have in-­house search capabilities, and several third-party vendors also offer trademark searching services. However, most third-party vendors do not provide an analysis of the search results or an opinion on the risks associated with using and registering a proposed mark.


3. Analyzing Search Results and Opinion


A trademark attorney typically requires one to two weeks to conduct a full search and provide a use and registration opinion, though expedited searches can be obtained for a higher fee. International searches typically take longer and should be analyzed by local counsel for the relevant jurisdictions.


Understanding the Application Process


1. "Use in Commerce" Applications


A “use­-based” application is based on existing use of the mark. The claimed use must be a legitimate use in the ordinary course of trade and not for the sole purpose of reserving trademark rights.


2. "Intent to Use" Applications


An “intent­ to ­use” (ITU) application is based on a legitimate intent to use the mark in connection with the goods or services listed in the application even though actual use has not yet taken place.


The USPTO examines and publishes ITU applications in the same manner as use­-based applications. However, a registration for an ITU application will not be issues until the applicant files an Amendment to Allege Use or Statement of Use along with appropriate evidence showing that the mark is now actually being used in commerce.


Application Elements


1. Applicant Information and Drawing


A federal trademark application must include the applicant’s name and address, legal entity or citizenship, name and address for correspondence (Either you or your attorney, if you are using one), and a clear drawing or depiction of the mark. If the trademark is not used or intended to be used in a particular format the applicant can use a standard character (block letter) format. The applicant should use a special form drawing if the trademark includes a particular style, lettering, color, or design.


2. Description and Classification of the Goods or Services


The USPTO classifies goods and services into 45 different categories (with several sub-categories within each larger category). The trademark application must include a description of the goods or services with which the mark is used or, for an ITU application, will be used. This must be specific and use common, concise, and detailed terms. For example, "clothing" is unacceptably broad. Instead, the application should list specific items of clothing, like "t-­shirts, pants, and skirts."


Getting the description of the goods and services right on the first try is important because the USPTO rules allow an applicant to clarify and limit, but not expand or broaden, the goods or services listed in an application. So, while "shirts," for example, may be limited to "t-­shirts and blouses," it cannot be broadened to include "pants." If you leave out an important category, you’ll be forced to file a completely new application with additional fees and you’ll lose your priority filing date from the first application.


3. Filing Fees


Filing fees are based on the number of classes covered in the application and must be paid when the application is filed. When filed online, the fee is typically either $225.00 or $275.00 per class.


4. Additional Use in Commerce Application Requirements


A use-­based application must also include:


a. Date of first use anywhere.

This is the date of the applicant's first use of the mark anywhere on or in connection with the specified goods or services.


b. Date of first use in commerce.

This is the applicant's first use of the mark in commerce that Congress can lawfully regulate (for example, interstate commerce or commerce between the US and another country) as a trademark or service mark on or in connection with the goods or services.


c. Specimen of use.

For each class of goods or services, the applicant must submit a specimen (generally a photograph or screenshot) showing the mark as actually used in connection with those goods or services.


Post-Application Considerations and Procedure


1. USPTO Examination


After the application is filed, it is assigned to a trademark examining attorney at the USPTO who will review the application to determine whether: 1)  The application meets formal examination requirements; 2) The trademark is distinctive and eligible for registration in accordance with the Lanham Act and the USPTO's regulations; or 3) The trademark is likely to cause confusion with any other previously applied for or registered trademark.


2. Office Actions


An initial response from the USPTO examining attorney usually takes three to four months (sometimes longer). If the application meets all formal requirements and the examining attorney has no further objections, the examining attorney issues a “Notice of Publication,” which is followed by publication of the mark in the USPTO’s Official Gazette.


Many times, the first response from the USPTO is a letter (known as an “Office Action”) from the examining attorney setting out objections to the application. Office Actions can include objections based on defects in the formal application (for example, the description of goods or services is overly broad or vague); Ineligibility for registration; Descriptiveness; or what the examining attorney believes is a likelihood of confusion with a previously registered or applied­ for mark. When an Office action is issued, the applicant has 6 months to either amend the application to correct any errors, or present arguments and evidence in an attempt to overcome the examining attorney’s refusal.


3. Appeals


If an applicant is not able to overcome the initial refusal by the examining attorney, he or she may appeal a final refusal by filing a request for reconsideration by the examining attorney or an appeal with the Trademark Trial and Appeal Board.  


4. Publication


If an application passes through the examining attorney's review without being rejected or abandoned, the USPTO publishes the mark in its Official Gazette, published weekly and available online or in hard copy. Once published, any party that believes it will be harmed by the registration of the pending trademark has 30 days to file an opposition.


5. Opposition Proceedings


An opposition is a proceeding in which an interested party seeks to prevent registration of another party's mark. Most oppositions are filed by an owner of a prior mark claiming the applied ­for mark is likely to cause confusion with the prior mark. If an opposition is filed, the applicant has 30 days to file an answer or the application will be deemed abandoned. The opposition procedure is similar to litigation in civil court, but is heard before the Trademark Trial and Appeal Board, which has specific rules governing the conduct of an opposition.


6. Registration of Use-Based Application


If no opposition is filed against a use­-based application for a mark on the Principal Register, the USPTO registers the mark and issues a Certificate of Registration.


7. Registration of Intent to Use Application


The USPTO will not register a mark applied for on an ITU basis until the applicant files a Statement of Use and an acceptable specimen showing use of the mark in the claimed class of goods or services with the USPTO. Therefore, if no opposition is filed against an ITU application, the USPTO issues a Notice of Allowance. The applicant then has six months to file a Statement of Use with an acceptable specimen and pay the required fee. An applicant can receive up to five 6-­month extensions (for a total of up to 3 years) to file a Statement of Use (including an acceptable specimen of use for the claimed class of goods or services).


8. Maintaining Trademark Registrations


Once a trademark is registered with the USPTO, the trademark owner must take affirmative steps to maintain the registration by filing certain documents showing that the mark is continuing to be used. The USPTO may cancel a registration if the owner fails to make the required filings.

Our Top 10 Trademark Tips

The authoritative treatise on trademark law, McCarthy on Trademarks and Unfair Competition, consists of 7 volumes and thousands of pages on developing, registering, licensing, protecting, and litigating trademarks and related rights. This list is not quite as extensive. However, when it comes to the most important elements for those just starting to explore the nature of trademarks and trademark rights, these 10 tips will give you an understanding of some of the more important elements to consider for your business.  


Want to skip ahead to a particular section? Use this:

1.   Choose Strong/Unique Marks

Consider the elements that make your trademarks easier to protect. There are typically 3 ways that business owners approach selecting names, logos, and other marks (like slogans) to use with their business:

  • 1. They choose a name that describes exactly who they are or what they sell.   Ex) “Big Dave’s Taco Shop”;
  • 2. They choose a name that has a clever relation to who they are or what they sell.   Ex) “Bone Drugs N’ Therapy” – for makers of prescription pills to increase bone density and fight osteoporosis (I don’t believe anyone has used this trademark yet. If such a company exists and you’re reading this – it’s all yours – you’re welcome); or
  • 3. Inventing a name that has no other connection to their services Ex) "Moddlee" – for accounting software.

There is a tradeoff to consider when choosing a more descriptive name vs. a more unique name. Choosing approach #1 will require little or no marketing for people to understand what you’re selling, but it comes with little or no trademark protection. Approach #3 will require a strong and sustained marketing effort to educate your target customers about who you are and what you’re selling, but should afford much greater trademark protection for the life of the business.


Trademark strength is classified by the United States Patent & Trademark Office (“USPTO”) according to the following scale, from weakest to strongest. The name in parentheses is how a hypothetical ice cream shop would be classified:


1. Generic - ("Ice Cream Shop")

2. Descriptive - ("Chicago's Best Ice Cream Shop")

3. Suggestive - ("Moo-Moo")

4. Arbitrary - ("Happy Monkey")

5. Fanciful or Coined - ("Zoku")


Keep in mind, there may be strong business reasons for using a name that falls closer to the generic/descriptive end of the spectrum above. If your family has been successfully running Smith’s Dry Cleaning for the past 50 years, changing your name to Paxit or some other invented name will most likely cause more harm than good.

However, with many companies and entrepreneurs operating their businesses partially or completely online and selling to customers around the country or the world, it becomes more and more important to have a business identity that is unique and able to be protected from competition.

2.   Evaluate the Competitive Landscape

Make sure the market isn’t flooded with similar names/designs and that your use will not be infringing on others’ rights. The fewer similar marks that exist in your industry, the easier it will be to protect the rights in your trademarks.


Consider the current competitive landscape in your target market, whether that’s local, statewide, nationwide, or globally. Are several companies using names and designs that are similar to yours? Just because you’ve never seen anyone using your name locally doesn’t mean there isn’t someone on the other side of the country doing so already. While that might not be a problem when you’re just starting out, as you grow and expand you’ll likely come across their radar and that could lead to some serious problems. The last thing you want is to be forced into completely rebranding right at the point when your business is starting to take off.


Fortunately, it’s relatively easy to do some online investigating to see whether there are any immediate red flags that jump out. If the initial searches come back clean, a trademark attorney can perform a more in-depth search and provide an opinion as to whether your proposed trademark is available for use. Depending on your needs and budget, there are also full-service companies that specialize in conducting the most comprehensive trademark clearance searches possible. While no amount of searching can guarantee there will not be a conflict down the road, if you intend to spend a considerable amount of time and money on promoting and marketing your brand, a full search can be a very worthwhile investment.

3.   Use Your Marks Consistently

In the United States, trademark rights arise when you actually start selling your goods or services using the trademark(s). These rights only continue as long as you are actively using the trademarks. That means that if you start doing business today as “Panda Design” and 3 years from now you change your name to “Rhino Design”, you’re essentially forfeiting the previous 3 years of trademark rights in “Panda Design” and beginning from scratch with “Rhino Design.”


This applies to logos as well. Small modifications may not affect your rights, but substantial changes in the design or overall impression of your logo can lead to a loss of rights as well. That’s why it’s important to be consistent when using your trademarks. Putting the time and effort into developing something you love today will pay dividends in the future. If you’re considering revamping your brand identity or switching gears entirely, be sure you understand how that will affect your existing rights so you don’t unintentionally forfeit them.

4.   Think About the Future of Your Business

Don’t limit yourself to the next month or year when thinking about your trademarks and overall brand protection strategy. Think about where you want it to go. What other areas do you hope to move into in the future? If you’re strictly doing business consulting now, will you add online courses or start doing speaking engagements in the next year or two? Will you sell branded apparel or coffee mugs? These are important considerations when carving out the scope of your trademark protection.


Trademark rights are classified into several different “categories” by the USPTO. There are actually 45 different categories to be exact – 38 for products and 7 for services. When you submit a trademark application, you select which categories your business will be operating in when using that trademark. That means that if you register “Delta” you don’t automatically have exclusive rights to use the name Delta on anything and everything you want. That’s why Delta Airlines and Delta Faucets are able to coexist.


When your trademark application is filed with the USPTO, an attorney from the USPTO’s office is assigned to examine/review your application. Part of that examination involves reviewing previously-registered trademarks to see whether any of them are similar to your new application. If the examining attorney determines that allowing your trademark to be registered would create a “likelihood of confusion” with a trademark that is already registered, your application will be denied. Sometimes these denials can be overcome by presenting evidence showing there would not be confusion, but it can add significant additional time and expense to the process.


The takeaway is that trademark categories are important for at least 2 reasons: 1) You need to register your trademarks for all of the categories that your business encompasses; and 2) You need to identify whether there are any pre-existing marks in the same or similar categories that could cause your application to be denied. Anticipating where your business is heading in the coming years will give you the best opportunity to carve out rights in the classes that you intend to use at the beginning and in the coming months or years.

5.   Don’t Forget Domains and Social Media Handles

Depending on the nature of your business, you may have been thinking about social media accounts from the very beginning. For others, social media may play a lesser role or be just one of several marketing channels they plan to utilize. This tip is pretty easy, but important to consider nonetheless: If Facebook, Instagram, Snapchat, or any other social media platform is going to be important to your business, make sure that the names you want to use are available. Similarly, check to see if the domain name you’d like to use for your website is available and consider registering multiple domains for close variations of your name and have those “variation” domains redirect to the domain where your website is hosted.


Registering for social media accounts is free and domain names are extremely cheap to obtain (typically less than $20/year) so there is no reason not to reserve both early on, especially if they’ll be important to your marketing and branding efforts.  

6.   Obtain Federal Registrations For Your Valuable Marks

It is a common misconception that registering a business name with the state where your business is located (like “Wendy’s Wacky Widgets, LLC”) provides trademark protection. Unfortunately, this is not the case. Registering your business entity simply allows you to legally operate your business under that name within that particular state. Most states will even allow other businesses to register nearly identical names (like “Wendy’s Wackiest Widgets, LLC”).


Rather, certain trademark rights (known as “common law” rights) are automatically granted to the first to sell goods or services in a particular geographic area under a certain trademark. However, those rights are very limited and nearly impossible to enforce without filing and pursuing a lawsuit claiming trademark infringement. That’s where obtaining federal registrations from the USPTO can offer several advantages. One of the most important is that a federal registration gives the owner a presumption of nationwide rights to use the trademark, meaning you will be able to grow and expand your business without worrying about encountering unexpected lawsuits or angry cease and desist letters. It also provides valuable tools for stopping the unauthorized use of your trademarks online and shutting down those trying to sell counterfeit goods using your trademarks.


When is it the right time to seek a federal registration for a trademark? In general, a good rule of thumb is that if a trademark has value for your business (i.e. it’s making you money), or you’ve spent significant time developing a name or logo that you really love, then it’s worth protecting. Just ask yourself, “how would I feel if someone else started using my name and logo?”

7.   Work With An Experienced Trademark Attorney

As with most things in life, you get what you pay for. I’m not going to tell you that it’s impossible to file a trademark application by yourself. However, what seems like a relatively simple process at first glance is actually much more complex in practice with several moving parts and numerous rules and exceptions that can trip up those who are not familiar with the process. In addition, once an application is submitted, certain mistakes cannot be corrected and filing feels are not refunded if that happens (which means you could be out several hundred dollars and having to start all over again).


Working with an experienced trademark attorney can help you understand the process, learn about your business, direction and goals for the future, and then map out a strategy to give you the best chance at successfully registering your applications and obtaining the broadest protection possible.

8.   Monitor Marketing and Sales Channels

Selecting strong, unique trademarks, using them consistently, and obtaining federal trademark registrations is only the beginning. Having first priority and rights in your trademarks doesn’t do any good if you’re not prepared to take steps to enforce them when necessary. Once you’ve carved out your rights, it’s up to you to monitor and enforce those rights. 


There are several ways to go about monitoring the competitive landscape, from simple things like setting up Google alerts, browsing e-commerce sites, and performing regular searches online, to more sophisticated monitoring software or hiring a 3rd party to monitor your marks and provide reports at regular intervals. Either way, set up a system to monitor marketing and sales channels to identify and shut down copycats, unauthorized trademark use, counterfeits, and any other trademark infringement. 

9.   Calendar Important Future Dates

To keep federal trademark registrations alive and active, the owner is required to file maintenance documents at regular intervals. In particular, there are documents that need to be filed between the 5th and 6th anniversary of the date the registration was granted and between the 9th and 10th anniversary. One of these documents is called a Section 8 “Declaration of Use” that must be filed between the 5th and 6th anniversary of registration and between the 9th and 10th anniversary of registration. A Section 15 “Declaration of Incontestability” may also be filed between the 5th and 6th anniversary.


Since they’re years down the road, it’s easy to forget about these dates, but failing to file a Declaration of Use will lead to your registrations lapsing and being cancelled. If you work regularly with a trademark attorney, he or she should have a system to track and monitor these important dates. However, scheduling these dates in your personal calendaring system is always a good idea as a backup since you are ultimately the one responsible for making sure your registrations are maintained.

10.   Consider Filing International Applications

Keep in mind that registering your trademarks with the USPTO only grants you trademark protection within the United States. If you plan to sell your goods or services outside of the U.S, you should consider filing international applications and obtaining trademark registrations in the foreign countries where you intend to operate. The “Madrid Protocol” is a treaty that can provide a cost-effective and efficient way for trademark holders to protect their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees in the same currency.

Infographic – Understanding the Trademark Process

From selecting a strong trademark for your business to understanding the various steps of the (lengthy) application and examination process with the U.S. Trademark Office, use this graphic to get a basic high-level understanding of the steps involved in the trademark registration process.

Doing A Clearance Search Before Filing A Trademark Application: Here’s Why It’s Important

The Dual Role of Trademarks

Trademarks serve a dual role in the marketplace:


  1. Distinguishing your products or services from those of your competitors; and 
  2. Protecting consumers from being confused or deceived about the origin of the good and services they purchase. 


The first is important to you as a business owner because your goal is to build a recognizable brand that your potential customers will associate with high-quality goods or services. The second is important for the people purchasing those goods and services to know they’re actually getting what they expect.

How Trademarks Protect Consumers ("Likelihood of Confusion" Test)

Let’s say that you’re shopping for a new laptop online. You see that you can purchase a new 13” Apple MacBook Pro for $1699 through Amazon:

Let’s say that you also notice a listing for a 13” “Mack-book Pro” that looks almost identical for $1099. A savvy buyer would likely notice the spelling discrepancy right away (and know that Apple having that big of a sale is too good to be true), but there’s a good chance that a certain number of people would purchase the cheaper laptop thinking they were buying a genuine Apple product.


This illustrates the second dual purpose of trademarks – protecting the public from being confused or deceived about the origin of the goods or services they purchase. One key factor in analyzing whether a trademark application can be successfully registered is whether allowing your application to proceed to registration will create a “likelihood of confusion” with a trademark or service mark that has previously been registered. In the example above, an application for “Mackbook Pro” would certainly be denied due to Apple’s existing trademark for “Macbook Pro” and the likelihood that people could think products sold by “Mackbook” were actually created by Apple.

Avoiding A "Likelihood of Confusion" Rejection With A Clearance Search

The best way to avoid having your application rejected by the USPTO due to this “likelihood of confusion” test is to conduct a thorough search to see if anyone else out there is already using a similar mark for their business. The USPTO website offers a good starting point, which is the Trademark Electronic Search System (TESS). TESS is a searchable database of every U.S. trademark that has been registered or applied for. The TESS system can be accessed by going to www.uspto.gov, hovering over the “Trademarks” tab and clicking on “Searching trademarks”:

On the following screen, scroll down and click on the "Search Trademarks" box:

this will take you to the TESS home screen that looks like this:

The USPTO website has videos that explain the basics of conducting a search using the system. At a minimum, a trademark applicant (or their attorney) should use this system to search for exact matches and common variations of the name or design the applicant is trying to register.


For the best chance of uncovering problematic pre-existing marks, a comprehensive search would include reviewing federal and state trademark registrations, government databases, business and trade periodicals, and internet searches to uncover third parties who have not registered their trademarks, but may still have common law rights within certain geographical areas. However, not even the most comprehensive search is guaranteed to uncover all possible conflicting marks and practicality and cost are also important considerations.

How Comprehensive Does A Search Need To Be?

As a general rule, the more you’re planning to invest upfront in developing and promoting your brand, the more comprehensive your search should be. It may not make sense economically for a freelance web designer testing the waters of a new side business to pour thousands of dollars into a search. Likewise, a business owner who anticipates pivoting several times and changing names or designs, may not want to make a substantial investment into protecting marks that they ultimately may not stick with in the long run. On the other hand, a tech startup investing millions of dollars into designing and marketing new software will want to take all possible precautions and conduct an extensive search.

When To Seek Professional Help

Determining what to search for and interpreting the results can quickly become a complicated process. If you’re unsure whether an initial search is sufficient or having trouble understanding the possible risks posed by existing registered trademarks (or unregistered trademarks discovered during an internet search), an experienced trademark attorney can help you evaluate your situation and suggest the proper scope of a search and the best strategies to pursue.


To preserve resources, it’s best to start with a quick “knockout” search of the federal registrations and some targeted online searches to identify whether there are any obvious conflicts before investing in a more significant undertaking.