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Things To Consider When Registering A Trademark

4 Things to Consider When Registering Your Trademark

Joshua Julien Brouard

Joshua Julien Brouard

15 September 20234 min read

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Things to Consider When Registering a Trademark

Trademark registration can feel like a big deal for numerous reasons. One of the primary of those is that trademark registration fees can be quite a cost for small businesses. And although our firm does its best to keep things affordable, legal fees are notoriously tricky expenses.

That's why, in this article, I've decided to give you four tips that you should consider before federal registration of your trademark. While our IP attorneys do know what to look out for, if you're trying to do it on your own, then you'd be wise to consider the following:

1. Make sure your mark is distinctive.

To make a "distinctive" mark means that customers will be able to identify clearly that the mark represents your goods and services.

For example, don't try trademark "ice cream" for an ice cream shop.

This brand name wouldn't clearly identify your ice cream shop, as the term is too generic. Customers will likely confuse your ice cream shop with all other ice cream shops.

So that you better understand this, please see the image below, where I go over the trademark strength spectrum:

Ideally, if you currently have a mark that would be considered generic, you'd want to work to create one in "the green," either to be recognized as an arbitrary or, ideally, a fanciful mark.

But so that you better understand, let's go over each below:

The weakest: Generic marks

As I've already covered, these marks are generic words that can be used to describe a product or service in the average consumer's mind. The federal trademark registration process is quite strict, so you'd be unable to register these marks.

Did you know that with use, some trademarks can become generic marks? Consider how yo-yo or cellophane is now generic due to consumer misuse.

Descriptive marks

While better than generic trademarks, descriptive marks are still considered relatively weak. This is because they describe the product or service but still don't adequately distinguish the business.

For example, if that same ice cream store was named cold and sweet instead of just ice cream, it would still be a weak mark.

Suggestive marks

These trademarks are associated with a service or product, although it's not immediately apparent that this is so. Suggestive marks hint at a characteristic.

Consider how Microsoft refers to software for small computers.

Arbitrary marks

Arbitrary trademarks are precisely that, totally arbitrary, so any work or symbol that doesn't relate to the services or products on offer would be considered as such.

What's an extremely popular example of this? Apple!

The strongest: Fanciful marks

Fanciful marks were made for the primary reason of operating as a trademark. They don't have any other meaning aside from this.

Kodak, for example, would be considered a fanciful mark.

2. Make sure you have all the pieces.

Don't worry if you haven't posted your brand name in shiny lights above your shop. Some may think you have to use your brand name and logo already to register it, but that isn't necessarily true.

In the U.S., you just need the word and or logo design handy with the intent to use one or both in commerce. It's that simple.

However, what may be more complex is the trademark registration process. While you may think you can do it on your own, there's a good chance you may hit "bumps" on the road. That's why we always advise consulting with a qualified trademark attorney.

If you're interested in booking with one of our attorneys but are reluctant to do so because it's digital, it may help to put a face to it all:

Interested in meeting with John and doing your trademark registration online? You can do so on the Trademarkia website.

3. Want to register a trademark? Think global.

Even if you are not immediately using your brand name or logo in another country, it's a good idea to think ahead. Make a list of all the countries you plan to work in and bring that to the table when you are ready to register.

The entire process may take some time to do. Especially if you've never envisioned your business even leaving the state you're in!

It's essential to think both “big” and strategically.

(Be careful of so-called "realistic thinking"!)

4. Register BOTH a domain name AND a trademark.

Trademarks and domain names require separate registration processes and provide you with different rights.

Don't make the all-too-common mistake of presuming domain name registration protects your trademark.

Trademark registration is very different and has to be done through the Patent and Trademark Office.

Most importantly, be patient!

The trademark registration process can be time-consuming before and after your trademark application process. That's why (1) collecting yourself, (2) strategizing properly, and (3) approaching trademark counsel when you feel prepared and know what you'd like to do is vital.

The expression "get all your ducks in a row" applies here.


FAQs

What are trademark guidelines?

Intellectual property guidelines dictate how business owners can register, protect, and use their trademarks. For example, the Trademark Office outlines particular application requirements for trademark registration.

What cannot be considered a trademark?

There are quite a few things that cannot be considered a trademark. You can't trademark proper names without sufficient consent, generic terms or phrases, vulgar words or phrases, or immoral or deceptive words or symbols.

What are three common trademarks?

The most common types of trademarks are words, logos, or slogans. 

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Joshua J. Brouard brings a rich and varied background to his writing endeavors. With a bachelor of commerce degree and a major in law, he possesses an affinity for tackling business-related challenges. His first writing position at a startup proved instrumental in cultivating his robust business acumen, given his integral role in steering the company's expansion. Complementing this is his extensive track record of producing content across diverse domains for various digital marketing agencies.