Filing a trademark application is a multi step process to ensure that you have the right information in your trademark application. If you get the information in these steps wrong, you have to redo your trademark application or, even worse, go through a rebranding effort.
To successfully prepare and file your application, you’ll need to complete four key steps:
- Step 1: Decide Who Will Own the Trademark
- Will it be you personally, the operating company or an IP holding company?
- Step 2: Choose Between Protecting Your Trademark as a Standard Character Mark or a Design Mark
- Step 3: Conduct a Knockout Trademark Search
- Step 4: Craft an Effective Goods and Services Description
Step 1: Decide Who Will Own the Trademark
The first decision is determining who will own the trademark. Will it be owned by the company that sells the product (aka, operating or use company), by the founder or a third party IP holding company? Each option has its advantages and disadvantages.
- Founder Ownership / IP Holding Company: If the founder owns the trademark, the trademark rights remain intact even if the operating company goes bankrupt. The founder can act as an IP holding entity, while the operating company handles sales. If the operating company faces bankruptcy or legal issues, the trademark remains protected from being sold to pay off the debts of the operating company.
- Operating Company Ownership: If you have investors, they may prefer that the operating company owns the trademark. In this case, you could set up two entities: one for holding the trademark rights and another for handling business operations and revenue generation. This way, investors and founders can share ownership of the trademark through the IP holding company.
Once you’ve decided who will own the trademark, it’s crucial to ensure that the entity’s name is correctly listed in the application. For instance, if you list “XYZ LLC” instead of “XYZ, Inc.” as the applicant, the application will be void, and you won’t be able to correct the mistake later. So, double-check the entity name when you submit the application.
Step 2: Choose Between Protecting Your Trademark as a Standard Character Mark or a Design Mark
Next, you need to decide whether to protect the standard character mark (the words of your trademark) or the design mark (the logo or design elements of your trademark).
- Standard Character Mark: This option protects the trademark’s wording, regardless of any specific design elements. It is often recommended for startups, as it provides long-term protection even if the brand’s design is updated or refreshed in the future. As long as the wording remains the same, your registration will still be valid. You can sue others that use the same words but change the design.
- Design Mark: This protects both the wording and the design elements of the trademark. If your brand has no wording and is purely a logo or symbol, this option applies. However, if you redesign your logo in the future, you will need to file for a new trademark. Also, you may not be able to sue others who use the exact words but change the design.
For most startups with tight budgets, the standard character mark is the better option since you don’t have to refile when you refresh your trademark. Its more likely to get refused registration but will last longer and be less expensive in the long run.
Step 3: Conduct a Thorough Trademark Search
Conducting a trademark search is one of the most important steps in the registration process. It helps minimize the risk of discovering, after launching your product, that another company already holds the rights to your trademark. This can save you from costly rebranding efforts.
Imagine that you’ve labeled your products, stocked inventory, and invested in marketing, only to find that another business owns the rights to your trademark. This could force you to throw away inventory and rebrand, leading to significant financial loss.
A trademark search helps identify whether anyone else has already claimed the trademark you want to use. The USPTO provides a tutorial on how to perform a thorough search, which is a valuable tool in avoiding potential conflicts. Watch: Why search for similar trademarks?
Step 4: Craft an Effective Goods and Services Description
In this step, you’ll need to describe the goods or services that your trademark will be associated with. Along with the mark itself, the description is essential to letting the USPTO know exactly what your business offers under the trademark.
To make this easier, the USPTO provides the Trademark ID Manual, a list of acceptable terms for goods and services. Using the manual can help ensure that your description aligns with USPTO standards and avoids unnecessary delays in the approval process.
For more guidance, you can watch the USPTO’s TEAS Nuts and Bolts video series, particularly the episode covering goods and services descriptions.
DIY Filing or Hire a Trademark Attorney
I’ve witnessed numerous inventors and startups successfully file their own trademark applications, often with decent results. However, I’ve also encountered situations in my practice where DIY attempts have gone wrong, leading to costly mistakes. While it’s possible to handle the filing yourself, I strongly recommend hiring a trademark attorney to ensure everything is done correctly.
If you need assistance, don’t hesitate to reach out to me.
Need Help?
If you need help working through the process, please give me a call at (949) 433-0900.
Answers to Your Basic Patent and Trademark Questions
This article is one article in my series titled Answers to Your Basic Patent and Trademark Questions which explains answers to the basic questions when you are seeking patent and trademark protection for your product. The articles relate to different basic issues you will encounter as you go through the patent and trademark process.
Patents
- Should I Patent My Idea?
- How to Create a Strong Patent?
- Should You File a Provisional or Nonprovisional Patent Application?
- Should you expedite your nonprovisional patent application?
- Strategies for Cost-Effective Foreign Patent Protection
- When Should You File a Patent Application?
Trademarks