What to do Before Applying for a Trademark in the USA

What to do Before Applying for a Trademark in the USA

  1. First, figure out what products or services your trademark will be for. A trademark is never just a word or a design, but is always viewed in context with its products or services. For example, the trademark COCA-COLA brings to mind a specific flavor of soft drink, while the trademark SOUTHWEST makes a purchaser think of taking a flight on an airplane. When a purchaser hears or sees your trademark, what product or service do you want them to think of?

  2. Next, think about what type of trademark you would like. A trademark is generally a word, design, or phrase that identifies the company or person that provides a good or service. A design trademark may sometimes be referred to as a logo and a phrase trademark may also be called a slogan or a tagline. For example, the company Nike, Inc. owns numerous trademark registrations which are all used with shoes. These trademarks include the word NIKE, the “swoosh” design, and the phrase “JUST DO IT”. All of these trademarks show up on the shoes themselves, on packaging for the shoes, on physical and online retail store signs, and in all sorts of advertisements. These elements can be registered as trademarks separately or together.If you’re just starting out, it’s probably best to start with a word trademark, as this will be what you use most when identifying your company and your products or services to the world.

  3. Before you start thinking up wonderful trademark ideas, it’s good to keep in mind what sort of trademarks you should avoid. You cannot trademark marks that are just generic names for products or services (e.g., SANDALS used with shoes, AUTO SHOP used with car repair services) and generally cannot trademark descriptive words (COMFY used with shoes, FAST used with car repair services), even if the descriptive words only talk about the quality of the product or service (PREMIUM used with shoes, BEST with car repair services). It’s also very difficult to register a mark that is made up of only a surname or a surname with descriptive or generic wording (ROBINSON’S, or WILLIAMS HARDWARE) or to register a mark that only indicates the geographic origin of the products or services or the origin with descriptive or generic wording (DALLAS, or TEXAS BARBECUE). Descriptive/generic wording and surnames CAN be used in trademarks, as long as they aren’t the only words; however, if they are used with distinctive wording, which we’ll discuss next. Lastly, you’ll want to make sure that your trademark accurately describes your products or services. If your trademark includes words that indicate your products or services originate from a place they don’t come from (SILICON VALLEY COMPUTER NERDS for products originating in Georgia), or indicate they have qualities they don’t (LEATHER IN ONE’S CAP for products that don’t contain leather), your mark will be refused.

  4. Ideally, you should pick a distinctive trademark that includes either suggestive, arbitrary, or fanciful wording.

    • A suggestive mark has a more subtle association with the products or services than a descriptive or generic mark. For example, NETFLIX suggests movies that are found via the internet and GREYHOUND suggests bus services that run as fast as their namesake animal.

    • An arbitrary mark uses a dictionary word that has nothing to do with the products or services. For example, AMAZON for online marketplace services, APPLE for computers, and DOVE for soaps.

    • Fanciful marks are made-up terms that only have meaning as a trademark. Think, EXXON for gasoline, PEPSI for soda, CLOROX for bleach, or VELCRO for hook and loop connectors.

  5. Once you come up with a trademark you like that seems strong, you’ll want to run a basic internet search to check if anyone else is already using your mark or one that’s confusingly similar to it. If you find that trademark in use with similar or related products and services, you’ll want to think of another option. To determine whether your products/services are related to a third party’s products/services, ask whether the products/services at issue are all likely to be sold or provided by the same company. For example, coffee shops often provide not only coffee, but tea, bakery products, and catering services. Thus, a customer seeing coffee and muffins both sold under the mark UNICORN WORLD are likely to think they originate from the same source, even if they’re owned by separate companies. In contrast, the vast majority of computer manufacturers don’t sell shoes. Thus, a customer who sees a laptop with the mark BANANA is unlikely to think that shoes bearing the mark BANANA originate from the same source.

  6. If your trademark passes your initial internet search, it’s time to run a Haloo comprehensive trademark search! Trademark applications are expensive and you can’t change a mark after you’ve filed it, so you really want to be sure of your mark before the application is turned in to the USPTO. Haloo checks your mark against previously filed applications on the US Trademark Register and runs several other searches to see if there are any other potential issues with your application before you file.

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