• Baroody Law

Brand Considerations: Trademark a name and logo & the USPTO registry

Updated: Aug 15, 2021

Filing for trademark protection is not to be taken lightly. Even after you file, it is important to then enforce your protection after it is granted. Before you submit your application, let me provide you with five key considerations.

  1. Are you using the proposed trademark in commerce? If you are not using your proposed trademark in commerce, the application you or your US Trademark Attorney files will be 1 (b), intent to use, unless you are filing under a foreign application status. In commerce means that you are actively using the trademark on the goods or in the services listed in your application. An example of use in commerce is you have a trademark for candy, then you need to have the goods in a retail store, online if that is what you specify or both physical and online, with the trademark preferably on a tag or product logo attached to the candy. However, filing an intent to use means you intend to use the goods or services in commerce. One question to ask yourself is how long it is going to take for you to get your goods or services in commerce. If your trademark is registered, you will need to file an allegation of use within 6 months or else an extension may need to be filed. Absent an extension, if you are not using the mark within 6 months of being granted the trademark in what is called a "notice of allowances," your trademark could be placed on abandonment status.

  2. Have you conducted an appropriate search to ensure you can use the brand name or logo in which you intend to trademark? I already have a post on properly conducting a search, so please read it for further details. However, if you have not conducted more than a USPTO trademark search, I strongly suggest you pause and get on Google, TinyEye (for a reverse image search of your logo) facebook, pinterest, etc. and make sure no one else is using your trademark in the same or similar goods or services. Believe me, it will save you heartache and possibly dollars down the line.

  3. Are you prepared to pay the price for defending your trademark in an opposition proceeding? In the event your trademark makes it within 10 feet of the end zone and is published for opposition, you need to determine if this is something you are ready to defend in case someone comes to challenge your rights to register the trademark. Just because a trademark examiner does not find an issue does not mean someone else with standing to file an opposition may not oppose your trademark. If your trademark is opposed, it can cost you thousands of dollars unless you defend this yourself. A trademark opposition proceeding is similar to a federal court proceeding, so filings, discovery, and a hearing are all considerations you need to think about. You may not hear about this when going through a minimal fee, online box store trademark filing solution.

  4. Do you even need a trademark? You need to determine why you are filing. You may be filing because you truly want to protect your brand name, your brand is going to dominate your market, and you want extra insurance in case someone else tries to use your brand. However, if your reasons are, "a friend told me I should do it," or "I think the TM or R symbol is cool and I want to use it," you need to pause and contact a trademark attorney like myself. If your brand name is descriptive like "Grass Cutting," for a lawn maintenance company, perhaps a trademark is not the best solution. However, if you have a unique name, perhaps a made up word, and this is going to be what defines your goods or services, then a trademark can definitely be beneficial so that average consumers are not confused as to where these goods and services originate. If you want to file, a holistic review needs to occur and I strongly suggest you reach out for a free consultation to an affordable trademark attorney like myself or other firms that provide more than a link to grab your payment!

  5. Are you even using the proposed trademark in the correct way to be a trademark? Just because you like the word and believe it is special to your business does not mean it can and/or should be trademarked. One very common example is the following: Company ABCDEFG sells T-shirts. These T-shirts have a unique phrase on the shirt. These T-shirts are then sold on a platform such as Amazon. The phrase has no independent meaning, it is just on a shirt and you want to profit from it. In my opinion, this is called an ornamental trademark and may result in your application being denied. This is not a strong usage of the proposed trademark at all. However, if ABCDEFG is the company for a band called ABCDEFG and this band is selling shirts with ABCDEFG on the shirt, it would be more than an ornamental trademark and would be used in a manner warranting brand protection. See the difference? To determine if your proposed mark is even being used as a trademark, ask an Attorney.

There are many more considerations when filing a trademark application. Some considerations could even have implications if not thoroughly considered! Take your time, ask someone who practices trademark law questions. Avoid going for the cheapest fee and make sure you are getting the best advice that takes your past, present, and future interests into consideration before submit is selected on your USPTO Trademark Application.

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