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5 Things to Consider When Creating a Trademark

When you’re coming up with a trademark, such as a brand name for your products or services, there are a few key points to consider. In other blog posts, I go into some of these points in a lot more detail, but for this post I wanted to pull the basic concepts together so you know on a high level what you should be thinking about. That said, here are 5 things to consider when creating a trademark:

1. Is it generic?

A generic term is the common name for a type of good or service. Examples include “Pizza Shop” or “Delivery Service.” Generic terms cannot be protected as trademarks. Sometimes, it’s not entirely clear if a term is generic. Avoid choosing a term that might reasonably be considered generic for your trademark.

2. Is it too descriptive?

A descriptive mark is an existing word (or phrase) that is used in connection with your product or service. “Cheesy” might be descriptive of pizza. “Speedy” or “Reliable” might be descriptive of delivery services. Descriptive terms are granted little or no protection as trademarks. The law recognizes that many businesses have to use these words to describe their goods and services.

Avoid choosing a “merely descriptive” term as your trademark unless you’re prepared to spend a lot of money over a long time to prove that you’re the exclusive user of that term in connection with your products or services.

3. Does anyone else have rights?

In the U.S., trademark rights are based on use. So if someone else is using the same or a similar brand name, in connection with similar goods/services, they may have the right to prevent you from using and registering your selected trademark.

Searching the United States Patent and Trademark Office’s database of trademarks is a good start, but it won’t tell you if someone else is using the mark without registration. That’s why it’s recommended that you have a U.S. Trademark Full Availability Search performed by an experienced trademark attorney before you start using your trademark.

4. Have you obtained the domain names and social media accounts?

Once you’ve selected a non-generic, non-descriptive trademark and have confirmed that it’s available, a quick and easy step is to obtain the relevant domain names and social media “handles”. I always suggest to my clients that they make a list of domain name variations of each of their marks and, where possible, purchase those domain names, in order to prevent competitors or trademark infringers from doing so. Think of how your preferred brand name might be misspelled – be sure to grab those versions of the domain name too!

5. When is it time to file a trademark application?

In most cases, the best practice is to file a trademark application with the United States Patent and Trademark Office to register your preferred trademark as soon as you’ve selected the brand name and cleared its availability. There is no advantage to waiting, and I have seen many cases where someone waits to file and another party files ahead of them. Even if you’re legally in the right, the process of opposing another party’s trademark application can be extremely expensive (think tens or hundreds of thousands of dollars). So don’t wait, get that filing in as quickly as you can.

And, of course, it’s best to leave the trademark application process up to the professionals. The most recent study I’ve seen showed that inexperienced applicants who hire an experienced trademark attorney are about 50% more likely to have their application succeed.

Need help clearing your trademark? Let’s talk.

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