If you are starting a new business and want to clear the commercial waters for your exclusive use of its name, logo, slogan, color, sound or other identifying device, or you have an existing brand name that you have poured advertising dollars into already and want to make sure your investment is protected as much as possible, then you will want to consider seeking federal registration of your trademark(s). However, before simply throwing money at the U.S. Patent & Trademark Office (PTO) by applying to register your trademarks, and risk spending more time and money down the road, you’ll want to do a few things first.
No. 1: Run a quick preliminary search on your own, using the PTO’s free TESS online database looking for any direct hits. You are looking for any matches of your mark, but in particular for the parts of the mark that are not obviously descriptive of the good or service. For example, if your business name is Star-Brite Florist, don’t worry about every match with the word “florist.” This quick search can help you eliminate names right away that you might have wanted to trademark, if they are clearly already taken.
No. 2: Whether you found worrying results or not from this preliminary search, you’ll want to find an experienced trademark attorney to evaluate the strength of your mark based on the legal standards of the mark’s “inherent distinctiveness” or it having “acquired secondary meaning.” Some marks just aren’t worth registering because they are too weak.
No. 3: Once you and your trademark attorney decide it’s worth looking into registration further, the next step is to conduct a comprehensive search to see if the mark or a similar mark is already registered or if it is unregistered but being used in commerce. By comprehensive, I really do mean comprehensive. Either your attorney can conduct the search on his or her own, or, more likely, the attorney will arrange to have a third-party trademark search company do the search, which is really a combination of searches, including direct hit and analytical searches (similar sound, appearance, etc.) on the federal and state level as well as business directories, yellow pages, ratings companies and more.
Your attorney should evaluate the results of the comprehensive search and write you a legal opinion recommending you pursue registration or not. This legal opinion is your insurance card that you can play if someone later sues you for infringement and your attorney recommended seeking registration, because you can argue that you are an innocent infringer and should therefore not have to pay significant damages in an infringement lawsuit.
No. 4: If your attorney recommends seeking registration, you can have your attorney apply to register the mark, or you can apply for it yourself. If you are going to do it yourself, you should still have an experienced trademark attorney review the application to make sure you’ve completed it correctly. The cost of having the attorney do the application or review your application is much less than the cost it will be to respond to multiple Office Actions by a PTO Examining Attorney. While there are bound to be some modifications required along the way no matter what, doing it right the first time will minimize the changes necessary.
*This article is for information purposes only and should not be construed as legal advice.