Trademark Basics (2 of 3)

How to Choose Your Mark

  • Avoid marks that are similar to those already in use because consumer confusion is problematic both in obtaining and using the mark;
  • Arbitrary or fanciful marks with no connection to existing related goods and services are preferable
  • Creating new words or marks like the Nike swoosh are the strongest, especially as potential domain names
  • Avoid using descriptive terms (e.g. carwash) which cannot be registered
  • Common surnames such as Smith make it difficult to prevent others with the same name from using it in connection with their business;
  • Geographic names are all ill-advised unless the mark has acquired secondary meaning (e.g. to be labeled “champagne” the drink must originate from the Champagne region of France)
  • Avoid marks that are deceptively misdescriptive scandalous or disparaging, an insignia of a governmental entity, is identified with a living individual or deceased President during the life of his widow, or is confusingly similar to a previously registered mark, or to a mark previously used and not abandoned;

Guidelines for Creation of Trademark Rights and the Registration Process

In order to qualify for federal registration of your mark, you must be either 1) using the mark on goods that are shipped or sold or services which are rendered in interstate commerce (or commerce between the U.S. and a foreign country) or 2) have a bona fide intention to use the mark in commerce within six months of the Intent to Use Trademark application.

Prior to the filing of you application, it is strongly recommended that you retain competent counsel to perform a comprehensive trademark search to identify potentially competing marks, if any. Once your application has been filed, an attorney examiner in the USPTO will review the application and decide whether it is acceptable for registration. Any objections made by the USPTO must be responded to within 6 months or the application will be considered abandoned.

Once your mark is approved, it is published in the Trademark Official Gazette and during the next 30 days third party objections will be permitted against your mark. If no opposition is filed, your registration will be issued in approximately 12 weeks. For Intent to Use Applications, you have 6 months from publication to either use the mark in commerce or request a 6 month extension of time to file a Statement of Use.


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