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6 Tips for registering a trademark without rejection

Updated: Apr 23, 2020

The trademark registration process can be lengthy and costly, following these tips will help entrepreneurs save valuable time and money.

1. Trademark Search- the search is the key. Most trademark applications receive a refusal because they have not completed a thorough search. A thorough search consists of searching for registered trademark names and common law trademarks. All registered trademarks, as well as pending applications, are listed on the trademark registry. Searching through the United States Patent and Trademark Office (USPTO) website is the first step in deciding whether your application will register without receiving a rejection. Search trademark database

While searching the registry, if you see other registered or pending applications that have the same or similar name to the name that you want to get registered and are in the same business industry as yourself, you have a problem. For example, let's take the companies "Delta Airlines" and Delta" for faucets, although both of these names include "Delta"; because they are both in two different business industries, air travel, and home decor there's no room for any consumer confusion as to the source of the goods or services being offered. Therefore, the similarities of the names would not stop these companies from registering.

A common law trademark allows one to use a trademark name commercially without registering it federally. Common law searches involve searching domain names, websites, and business registrations, etc., to see if there are any similarities between your name and other businesses. Generally, common law trademarks do not impact a trademark application because the USPTO examiner will only be checking for registered trademarks as well as pending applications, however, the common law trademark holder can oppose your trademark application once it has moved passed the examiner stage or even after. This is why it is important to do a thorough search of both registered trademarks as well as common law trademarks.

2. Be Creative- an effective trademark name should be unique, creative and distinctive. The whole purpose of having a trademark is to have a unique, identifying mark that consumers can associate with the goods or services that you are offering and differentiates between your company and other companies offering similar or the same goods or services. Generally, entrepreneurs like to choose trademarks that describe in some way what their business is or is offering to consumers, for marketability and consumer association. However, this approach limits your capacity to receive a trademark without rejection. Businesses that have similar names in common, in the same industry will have a difficult time registering because consumers cannot differentiate between the goods or services being offered by one company as opposed to the other company.

Think of companies such as "Uber" or "Google" which have created unique words to use a trademark name. The uniqueness of the trademark ensure no consumer confusion since no other company would have registered that name, and allows entrepreneurs to fully market and control the message of the company free from any competition. Keep in mind your business name does not have to be the same as your trademark name, so a little imagination will go a long way.

3. Be broad and clear-every trademark application requires a class number and description as to what goods or services are being offered. This is the time to keep your description broad and succinct as opposed to using a lengthy mission statement. Improperly classifying your goods (i.e. clothing, computers, furniture) and services (i.e. consulting, real estate, automotive) will result in rejection that must be corrected to continue on with the registration process.

The USPTO has a class id manual, where all the class numbers and descriptions are located. For example, if you provide automotive repair services, the correct class and description are (037: Automotive maintenance and repair). Using the class numbers and descriptions found within the manual will ensure your application will pass to the next step provided you have the right class number and class description for the goods or services you are offering. Trademark classification list

4. Choose your path carefully- there are two ways you can file the trademark application, 1) currently using the trademark in commerce or 2) an intent to use the trademark in the future. If you are currently using the trademark, simply supply the date you first used the trademark in connection with the goods or services and an example of your use. The USPTO wants to make sure you are actually using the applied for a trademark to sell, market and promote the goods or services listed on the application.

Entrepreneurs can file an intent to use application before they have used the trademark in commerce. Please keep in mind, that every trademark must supply a date of first use in commerce along with an example of how you are using the trademark before you will receive a registration. In other words, you must move from an intent to use the trademark to actually using the trademark and show proof of use within six months of filing the application or file for an extension of time to supply the proof of use.

5. Submit the correct proof of use- every trademark application must show proof of how one is using the trademark in commerce. The USPTO has very specific requirements for submitting the proof of use, which often confuses entrepreneurs and the majority of the time results in a rejection. The type of proof of use that is required is determined by the goods or services being offered.

Let's say you are a seller on Amazon, the proper proof of use would be a screenshot or link to your Amazon page with the 1) trademark name being applied for, clearly displayed, 2) with the applied-for goods you are offering. On the other hand, if are selling clothing, you will need to have retail tags displaying the trademark name attached to the clothing and not merely on the front of the shirt. For more examples of proper proof of use. Examples of proper proof of use

6. Check and recheck your application- make sure the information you are submitting is correct and accurate. Double and triple check the trademark owner names, your contact information, and that the trademark name applied for matches the trademark name on the proof of use. This may seem like a no brainer, but any variation between the trademark name and proof of use or any missing or inaccurate information will result in a rejection.

If you have further questions you can always contact trademark attorney Heather Green Miller at HGM Law Office.

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