No matter whichever business you are entering into, it’s important to distinguish your brand identity from your competitors. And the same can be achieved through ‘Trademark Filing’. A Trademark can be defined as any unique expression that a business uses these days to distinguish their business, goods or services from those of other traders. A Trademark is not confined merely to a word, slogan, photograph, logo, graphic and color combination, but these days we can trademark the sound or even smell.
Viewing the fact that a Trademark is a comprehensive and broad term it’s important to do a full trademark search prior to investing your hard earned money and resources into a mark. A comprehensive trademark search will ensure that your intended mark is worth investing money and resources.
In our previous posts and articles, we discussed, How to do a Trademark Search, or How to do a trademark image search, and How to do a trademark search in the U.S. PTO database. However, today we will be discussing something different, like facts to consider while doing a trademark filing.
Avoid generic words: The main goal of a Trademark is to reduce the likelihood of confusion among buyers. Thus, important PTO’s want their applicants to come up with words that are easy to be distinguished. Intending to trademark generic words will be an exercise in futility and thus, we need to avoid moving ahead with such terms. For example, if you have a dairy business and wish to market milk related products then you can’t trademark the term “Milk” which is too generic. Same goes with software related products; you can’t get a trademark for the word “Software” itself that will make it very generic.
Declare the ownership of your trademark right at the beginning: Before you trademark a particular mark and undertake trademark search related activities, it’s important to declare who will be the proprietor of the mark. This is important because, if you wish to sell your trademark in future, the money have to be given to some legal entity. One can make proprietor to oneself, the attorney’s name, or the corporation’s name as you wish.
Respond to office action queries promptly: Responding to office actions promptly is important because an office action letter indicates that there is an issue with your application and it needs to be addressed before your trademark gets approved.
Avoid using defamatory words: Though we are living in a liberal world where we have rights to express our own desires and feelings still it’s not absolute and you can’t just trademark any word that you want. You might have heard turning down the trademark “Obama Pajama” by the U.S. PTO. This is a clear cut indication that the patent office wants its applicants to show some modesty with their chosen words. You can’t use words that have profanity, obscenity and/or are vulgar.
Undertake a full trademark search: Trademark rights are granted on “First-to-Use” basis, wherein trademarks are assigned to any entity that has used that mark in their products first, irrespective of whether it is filed with a PTO or not. Trademark rights stem from use, not merely from registration. Thus, it is important to do a full trademark search wherein federal databases, common-law sources, domain-names, financial disclosures, yellow pages all are searched thoroughly to ensure you are not taking on an already established mark.
