Things to Consider Before Filing Trademark Application


Trademarks are essential business assets with several trademark applications being filed daily in the U.S. Nevertheless, if your application is not satisfactory, notable issues can come down the track which might prove unsolvable. Below are some of the vital factors to consider before filing a trademark application.

Search for similar marks

Searching for similar trademarks is a crucial step that most people always overlook. Predictably, it is incredibly frustrating to find that you have wasted both money and time on the mark that can’t be registered solely since there was previously something similar out there. Do not search the trademark register, search high and low for anything similar to your mark. In some situations, if a trademark same as yours isn’t registered in constant use, your application may be turned down, or gains of your registration can be diminished. Search for similar marks will protect you from financial losses and infringing another person’s trademark.

Confirm ownership of the trademark

If you check you will realize the U.S. has become strict on trademark ownership issues in recent years. Therefore, it is important to ensure that the entity or person who owns the trademark at the period of filing the application is the one listed. It is necessary to note that there can be severe consequences if the wrong entity is listed, including failure to transfer the trademark in the future.

Hire a trademark attorney

Most people make the mistake of not hiring a trademark attorney before they register a trademark which is a big mistake. They do this to avoid the cost associated with hiring a lawyer. Still, they fail to understand that hiring a trademark attorney helps reduce the cost incurred in case of opposition and objections. They could also help prevent trademark infringement and monitor your trademark to ensure it stays protected.

Consider your intention with the mark

You will need to choose the services and goods that registration covers. If you happen to miss something core to your business, your registration might not be as productive as it could be. Or if you include inappropriate things, you risk either losing at least a portion of your registration for ‘non-use’ or overlapping with additional trademarks. You should come up with a plan which outlines precisely what you intend to do with the mark before the filing of the application, advised Robert McKinley Attorney, who represents his clients in multiple areas of law, aggressively litigating, serving as local counsel, and seeking the best resolution to legal claims and disputes. He has over twenty-five years of experience in patent and trademark litigation as well as proficiency in other specialties including breach of contract and breach of employment agreement cases. In addition, Mr. McKinley holds his degree in Electrical Engineering and is skilled in working with mechanical, electrical, and computer systems and devices.

Consider the form of your trademark

Before filing for a trademark application, you need to know if it is a word or if you will use the word as part of the logo and if you will use a sound or shape to identify your products. It might even be that the best approach is to file several applications to cover several ways that the trademark will be used.

Check for prohibited items

Some phrases, symbols and words can’t be registered as or part of a trademark (and not only the offensive ones that might come to mind). For instance, an application for the word “BANKSIA” would not be provisionally denied, and it has the word “BANK”. This word and others similar to it can’t be registered with consent from the concerned authorities. The use of the right symbol passes the right message to the public.

It is advisable that you speak to an experienced competent property lawyer should be your priority when you want to apply for a trademark. This will help you in making the most appropriate and successful trademark application.

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