The United States Patent and Trademark Office, the government agency responsible for trademark registrations, provides up-to-date, comprehensive guides and toolkits:
It’s important to note that the USPTO is a SELF-FUNDED AGENCY.
This means they are incentivized to make every effort to help you through the application process. Well, it’s in their self-interest because they charge a flat fee for examining your application; poorly prepared applications cost them more time and resource.
Please do not ignore what they say “basics”. They are basics in the sense that you MUST KNOW THEM before applying for registration. It’s your first step toward legally securing one of your most valuable assets, your brands.
These are called “trademarks”. Trademark is a way to tell people that products bearing the “words, logos, etc” are from you.
Once you register your trademark with the USPTO, you put everyone in the U.S. on the notice that you own the trademark.
This makes it easier for you to stop others from selling fake goods/services that pose to be yours.
Average client spends about $710 including all government fees and other expenses to get a trademark registered.
The amount is based on actual billing data for IPfever clients’ trademarks that are registered in the past two years as of writing this article.
B. Product design
You can get “design patent” for the ornamental feature, like the wing-shaped sleeves.
Once you patent the design, you get a legally sanctioned monopoly for the design in the U.S. for more than a decade.
Getting a design patent can be a tedious and expensive process. However, for industrial design, it’s often the only option.
Average client spends about $4,020 including all government fees and other expenses to get a design patent.
The amount is based on actual billing data for IPfever clients’ design patents that are issued in the past five years as of writing this article.
C. It’s all in the making.
Manufacturing techniques,
special treatments,
textile printing method,
special construction,
and more
When people say “patent”, they mean “utility patent”.
If you developed a new product, it’s likely you invented something. In other words, unless you copied someone else’s goods/services without a single improvement, there is something you can patent.
Nevertheless, it is important to understand that patent doesn’t protect a product as a whole. It rather protects a specific feature of the product. Sometimes, the patented feature is so minor that others can outcompete you without it, making the patent useless.
Average client spends about $7,600 including all government fees and other expenses to get a utility patent.
The amount is based on actual billing data for IPfever clients’ design patents that are issued in the past five years as of writing this article.
Of course, there are more ways to protect your IP, but the above three should give you a head start.
Some people mistake a patent as a comprehensive protection for a certain idea or product. Well, a smartphone is said to be covered by 250,000 patents. It should tell you how narrow a patent can be.
Does that mean it is easy to get patent?
For a surprise to someone, the answer is “yes,” but I didn’t say it’s cheap.
For a product development, creative steps are essential even if you are imitating another product. You don’t know how they built it, so you re-create the manufacturing steps after reverse-engineering. In so doing, you’ll have to go through trials and errors, and then you end up with a better, or sometimes worse, article.
Well, if the difference is on the better side, you might want to get it patented. Even if it’s on the worse side, you can still get a patent. I know it goes against your intuition, but legally speaking, “utility” means that it has a use, not necessarily a beneficial one.
So, a minor tweak in manufacturing process and a tiny new feature in your product can be patented.
Why then, do people speak so highly of patent?
To get a patent, you will need help from patent professionals. And they are expensive.
While it is easy to say that patent grants you exclusive rights in certain steps or features, disputes regarding the steps and features will be always very technical and to the minute details.
A patent has to be very clear as to what extent the patent owner has exclusive rights. And for that, patent law has developed in a way that having a law degree will not quite make you cut out to be a patent practitioner. An attorney with an engineering degree can sit for a patent bar administered by the United States Patent and Trademark Office, which has notoriously low pass rates. The result: it costs many thousands, even up to hundreds of thousands, of dollars to secure a patent.
It is not to say there is always positive correlation between cost and value. But, in reality, you wouldn’t invest in something unless it justifies the cost. Issued patents are there because at least someone believed the value would exceed the cost.
How do you measure the value of a patent?
There are many factors including the size of potential market and consumer demand, but most patent professionals agree that it essentially depends on how difficult it is to “design around.”
Let’s say you make a new product that goes viral. Consumer demand skyrockets, and you have legally sanctioned monopoly, assuming you got the patent. Your competitors would look at your product, and the first thing they would think about is how to make a similar item that is not infringing your patent right.
We call it designing around a patent. If your competitors can easily design around your patent, the value of your patent is, of course, not so much.
Patent practitioner tries to make your patent hard to design around.
To get a patent, you will need to explain your tech to the extent anyone has ordinary skill in the art can reproduce the tech. Further, you will need to claim what exactly is the scope of your patent right.
The scope sets the boundary of your patent right, so it tells others if their products would infringe your patent. Further, others will try to find out if they could design around your patent.
It is a critical aspect of patent prosecution because you, as an inventor, can claim the boundary of patent right.
Of course, you have to persuade the USPTO, or the patent examiner, that your claim is not overreaching. Overreaching patent scope might unjustifiably call a common practice in the industry patent infringement. So, when you claim broadly, the USPTO will be reluctant to grant a patent.
Last words
So, the real question is if your invention would make a “good” patent that is worth of your money.
When you go through a TEAS application, you will be required to assign an acceptable identification of goods/services for your trademark. In doing so, you will be (sometimes unknowingly) assigning an international class as well. Find out what are these and how to choose them.
International Classes & Acceptable Identifications of Goods or Services
These are two separate systems of categorizing goods and services. As you probably know by now, a trademark (or servicemark) cannot exist without an associated good or service. In other words, you cannot claim a phrase like “Your Favorite Snarky Joe” alone as a trademark. When you make and sell t-shirts printed with the wording “Your Favorite Snarky Joe”, you can stop others from selling T-shirts with the same print. That’s how trademark works.
Naturally, when you file a trademark application (or TEAS) for your brand with the USPTO, you need to provide a list of goods/services your brand sells/offers (or plan to do so) in the U.S. market. An option is to search something called “ID Manual” that has a list of goods/services. For your information, they are called “acceptable identification” because they are pre-approved for use in trademark registration. In fact, you are required to choose exclusively from the ID Manual if you want to qualify for TEAS plus, which is at least $50 cheaper to file.
It’s “at least” $50 cheaper because application fees are calculated based on how many International Classes you have. In the ID Manual, you will see a three-digit number with a heading “Class” next to each item. That’s short for International Class, and it’s international because representatives of many countries met in Nice and agreed to have a common classification system for trademark. There are only 45 Classes, each encompassing a wide range of goods or services. For example, Class 1 includes various chemicals for industrial and commercial purposes such as
sensitized paper;
tyre repairing compositions;
salt for preserving, other than for foodstuffs;
certain additives for use in the food industry, for example, pectin, lecithin, enzymes and chemical preservatives;
certain ingredients for use in the manufacture of cosmetics and pharmaceuticals, for example, vitamins, preservatives and antioxidants;
certain filtering materials, for example, mineral substances, vegetable substances and ceramic materials in particulate form.
In many cases, all of goods/services you sell/offer will belong to a single Class. If that’s the case, it does not matter how many goods/services you include in your application. The application fee stays the same. However, if your goods/services span over two Classes, you will pay double the application fee (which is $250 as of 2022). Three Classes, then triple the amount. If you cannot find a suitable description of your good/service in the ID Manual for your goods/services, you will have to opt out of TEAS plus and simply type up a description in your own words. For the $50 extra fee, the USPTO will examine whether it’s an acceptable identification or not.
Which is better: Over- or under-inclusive of goods/services?
If you are already selling/offering the goods/services in the U.S. market, obviously there is no reason to be over-inclusive. To include goods/service planned for future, you will have to file a separate intent-to-use (“ITU”) application for those items. But if you are filing for a trademark that is not currently in use in the U.S. (i.e. filing an ITU application), it may be tempting for you to include as many goods/services as possible. As long as they all belong to a Class, you pay the same, right?
You should not include more than those you firmly plan to sell or offer in the U.S. because you are required to prove that you are currently selling or offering all goods/services listed in your registration at all times. To explain further, although you only need to submit a single specimen for an entire Class in your application and most likely throughout the registration process, the USPTO can always ask for more later. In fact, they do periodical audits to carve out trademarks that are no longer in use.
On the other hand, when your goods/services span over multiple Classes, you might consider going under-inclusive. Many trademark DIY-ers have a tight budget, and application fees are the ultimate cost for them. So, having multiple Classes may need to be avoided at all costs. In this case, you should focus on your core business. The USPTO will almost always first reject an application if they find a registration with a similar trademark in the same Class. In terms of fending off your competitors, you should have your trademark registered in Classes where your competition happens.
If you’re worried that your competitors may have a similar or same trademark registered in a Class potentially competing with your interest in the future, you can either file an intent-to-use application preemptively or monitor USPTO Official Gazette that publish trademarks to be registered if not opposed. Filing a preemptive application will only work for a period of time because you will be required to submit proof of use within 6 months (can be extended up to 3 years) after the examination of the application is completed. And there are professional Gazette monitoring services, which can be highly efficient if you have a large trademark portfolio.
Although Classes and IDs are made by the USPTO for administrative purpose, they often make big differences in real-life outcomes and affect your legal rights in terms of enforcing your trademark right. Do spend time and double-check if you’re in doubt.
You may be able to move the USPTO to expunge or cancel a trademark registration for not being commercially used in the U.S.
What is Expungement (and Reexamination) of Trademark Registration?
Virtually anyone can petition for an expungement of a registered trademark with the evidence of record supporting that the registered mark has never been used in commerce on or in connection with some or all of the goods and/or services recited in the registration.
Similarly, for registered marks that were not used at the time of filing or by the time provided for statement of alleged use, a petition for a reexamination can be filed with the corresponding evidence.
Either one is an ex parte proceeding before the USPTO, meaning once you establish that there is a prima facie case of non-use (see below), the registrant will need to prove otherwise.
Eligible period?
The registration should be in between 3 and 10 years from the date of registration. However, till December 27, 2023, you can file for an expungement proceeding for a registration that is at least 3 years old, regardless of the 10-year limit.
What is a prima facie case?
It’s a legal term of art that requires a working knowledge regarding burden of proof in a legal proceeding. The more important thing is how to establish a prima facie case.
When you file a petition for an expungement or reexamination you must include evidence as follows:
a. The elements of the reasonable investigation of nonuse conducted, as defined under § 2.91(d), where for each source of information relied upon, the statement includes a description of how and when the searches were conducted and what the searches disclosed; and
b. A concise factual statement of the relevant basis for the petition, including any additional facts that support the allegation of nonuse of the mark in commerce on or in connection with the goods and services as specified in § 2.91(a);
A clear and legible copy of all documentary evidence supporting a prima facie case of nonuse of the mark in commerce and an itemized index of such evidence.
What can be used as evidence?
As set forth in § 2.91(d)(2), appropriate sources of evidence and information for a reasonable investigation may include, but are not limited to:
State and Federal trademark records;
internet websites and other media likely to or believed to be owned or controlled by the registrant;
internet websites, other online media, and publications where the relevant goods and/or services likely would be advertised or offered for sale;
Print sources and web pages likely to contain reviews or discussions of the relevant goods and/or services;
• Records of filings made with or of actions taken by any State or Federal business registration or regulatory agency;
The registrant’s marketplace activities, including, for example, any attempts to contact the registrant or purchase the relevant goods and/or services;
Records of litigation or administrative proceedings reasonably likely to contain evidence bearing on the registrant’s use or nonuse of the registered mark; and
Any other reasonably accessible source with information establishing that the mark was never in use in commerce (expungement), or was not in use in commerce as of the relevant date (reexamination), on or in connection with the relevant goods and/or services.
Notes
If you find a trademark registration that blocks your trademark’s registration or simply in the way of your commercial utilization of the trademark, it is definitely worth a look to see if the registration was legitimate and valid.
Also, the ex parte proceedings can be an effective way to respond to any claims against your trademark use or application based on a previous trademark registration, including a letter of protest, a TTAB opposition proceeding, and other legal disputes. The ex parte proceedings will suspend any actions before the USPTO and the TTAB.
“The Story of” series of articles are written by Young Jeon, Esq. to share his experience with a trademark application filed with the USPTO. It is intended to be informative as to the USPTO trademark registration process. Only information readily available to the public is contained in this article.
DASAMOA® is an online retail department store based in Texas.
I particularly remember this case for taking only three days to file. That means I spent only three days on reviewing, preparing, and filing the application. One might say, “Three days? I can do it in 20 minutes.”
What needs to be done?
When you have a totally arbitrary standard character mark, such as “QEGIX”, you often find no similar mark used for related goods or services. Also, when the mark is currently used for a good and you can personally verify the use, you can move pretty quickly.
However, even in those cases, it typically takes more than a week due to things like executing a retainer agreement, following up with the clients, and so on.
What’s arbitrary?
A mark is arbitrary when it does not have any pertinence to the good or service with which it is associated. I used QEGIX as an example above because it is probably not pertinent to any good or service. However, even a common word like Apple can be arbitrary when it is used in association with electronics and computers.
What’s “current used for”?
Before registration, a trademark must be used, and a mark is used when goods bearing the mark are sold in the United States. Technically, the marked goods have to move across the state borders, but in today’s world it’s rather hard to find a good that is made and sold within a single state.
Why verify?
I work with diverse clients with different backgrounds. A lot of businesses are based in a country that has a different trademark registration scheme than the U.S. system. In fact, in many countries one can simply file for a trademark regardless of the “use” requirement. Hence, I make sure if they are using the mark correctly among others before filing an application.
Notes
For a service, the “use” requirement is satisfied when a service is offered.
A web page can be used as a specimen for both goods and services. However, you will need to include the web address and the date on which you produced the screenshot in your application.
Timeline
10/26/2020: Initial consultation 10/28/2020: Application filed 4/5/2021: Office action* 4/5/2021: Response to the OA 8/10/2021: Published for opposition 10/26/2021: Registered
*A clerical error caused an office action to be issued. It was resolved without additional charges to the client.
There are many business owners who own registered trademarks but have no idea about it. How come?
Possible scenarios:
You’ve registered a trademark when you started up, and you never looked back.
You thought having your business/brand name registered was a good idea one day, then you managed to get it registered. And now it feels like an ancient history.
You hired someone for your trademark registration, and you don’t know where to find them now.
Well, here comes what to do when that happens.
First, see if you have “U.S. Serial No.” or “Registration No.” in your hands.
If you have any of the following, you can find the number easily:
Registration Certificate (for your trademark)
USPTO Official Receipt (for your trademark application)
An email from the USPTO regarding your application or registration
If you don’t have any of those, you need to go to TESS and look up your trademark. See generally TESS Search Hacks.
Second, you go to TSDR and access the current status of your application/registration.
Just type the number you have in the box, and hit Status.
If it reads “Registered” on your status as highlighted below, you have a registered trademark.
If you don’t have a registered trademark, it’s obvious that you need to do something about it.
However, even if you have a registered mark that’s issued and active, you might still need to something.
Lastly, click Maintenance tab on the top.
Then, you’ll see something like this.
It will tell you if your maintenance is due. In other words, if you don’t act in time, your trademark registration will be canceled.
Well, losing registration doesn’t mean you lose your trademark altogether. In some cases, you can even revive your registration. However, there will be at least a suspension of your statutory rights under the registration, so you do not want that to happen.
If you didn’t do your application yourself, you may need help with maintenance as well, but not always.
Maintenance chiefly comes in two varieties: (1) making sure the registrant is still using the mark and (2) impose reasonable fees for keeping the trademark Registers. The latter is, as you probably guessed, about paying the bill while the former requires some documentation to prove your use.
Let’s talk about the former variety. This type of maintenance filing is often rejected for submitting a wrong specimen. So, you probably should check out Specimens | USPTO before filing.
Other than that, I believe the maintenance filing is pretty straightforward as long as you read and follow instruction carefully. Just make sure you find a correct form on the Index of all TEAS forms | USPTO.
Updated on 2/6/2024 for the all-new Trademark Search by USPTO.
Trademark attorneys, like myself, use USPTO’s Trademark Search like everyone else. I will walk you through the entire process with helpful tips you can use right away.
Now, hit the “Search by all” button on the top left, and choose “Wordmark”.
If you know what company name (or brand) you’re looking for, you can simply type it here.
Alternatively, it should give you a good start if you’re concerned about others using more or less same name or design as your brand.
For example, if you search “apple”, it will show you all trademarks in the USPTO’s database that contain the word “apple” as well as any design related to the fruit “apple.”
The above are just the first 16 trademarks out of 4,694 results that I got today.
Narrow it down using description of goods or services
Let’s start by saying a trademark can’t stand alone without association with a good or service. When you see a sign saying “Apple” in a grocery store, would you assume that the fruit is produced by Apple, Inc.?
No. That’s why you should be interested only in the trademarks used in association with the goods/services related to your business.
You can narrow your search result by typing your own description of a good or service. Just locate a new box, pre-filled with the title “Refine search by goods or services”, next to the search box you just used.
You can, for example, search “socks” if you’re in the socks business, but that’s when you are interested in pretty ordinary items like socks.
Alternatively, use the International Classes
Trademark examiners are more likely to use International Classes (or ICs) than descriptions like “socks”.
A brief introduction to the ICs. Countries around the world decided to categorize trademarks into 45 international groups or classes. International Class 1 is for chemicals; 3 is for cosmetics and cleaning preparations; and so on. There are only 45 ICs. Because it’s easy to presume that goods or services in the same category are closely related, when a trademark has a similar mark registered in the same IC, it’s an automatic red flag for trademark examiners.
Also, you should consider related ICs. For example, meats and processed foods (IC 29) are often sold at the same place as staple foods (IC 30) and natural agricultural products (IC 31). This is covered by “coordinated” feature of the Trademark Search. More about this further down.
First, it’s a good idea to skim through the list of ICs.
Incorporating ICs into your search is so easy although it’s called “Expert”. You only need to click the button “Expert” next to the search boxes.
Now you can see the list of ICs on the left column. You only need to click on the ICs you’re interested in.
You probably already found this, but there’s a “Coordinated” toggle above the list of ICs. When you select an IC, some ICs will be automatically selected in a lighter color, if the toggle is on. These are ICs that the USPTO deems related to the IC you selected.
You can play with other toggles such as “Live” and “Dead” in the “Status filter” above to further narrow down the search.
Advanced search
Unfortunately, people don’t always use correct spellings for brand names. Sometimes, the number “0” may replace “o” in a trademark, making your search incomplete.
Trademark Search offers you an option to use Regular Expression (Regex) instead of simply typing “Apple”, but this calls for the use of “FIELD”.
I put FIELD in all-caps because “fields” should always be capitalized in Trademark Search. So are Boolean operators like AND and OR.
Start with a CM FIELD.
Combined Mark FIELD lets you search not just the words but also alternative spellings and translations.
First, we want to find out the most distinctive and recognizable part (or parts) of your trademark. We will be calling the part(s) keyword(s).
If your mark is “T-mobile” for telecommunication services, I would say the keyword is the letter “T”. If your mark is “NinjaBlender” for blenders, “Ninja” would be your keyword. If it’s “Saks 5th” for a retail store, it’s “Sak” and “5th”.
For made-up words like Noorola, just pick a part that looks familiar, like “rola”.
You should type in (or copy and past and change KEYWORD to your own keyword):
CM:/.*KEYWORD.*/
in the search box after changing the blue box to “Search by filed tag” as shown above.
e.g.
If you have more than one Keyword, you can connect them (KEYWORD_1 and KEYWORD_2) with “AND” to find only marks that have both.
CM:/.*KEYWORD_1.*/ AND CM:/.*KEYWORD_2.*/
e.g.
This search pulls up all the trademarks that had been registered and applied as well as currently registered trademarks as long as they include your Keywords. Because we added the regex “.*”, if your keyword is home, the result will include Homedics. However, your search won’t include “fifth”, more about this later on.
A good thing is that because we used the field “CM”, you will not miss a foreign equivalent of your keyword. e.g. Primera Banco for an equivalent of First Bank.
Other fields to use.
I personally try to go through at least hundreds of marks that are most similar. However, on many occasions, the Keyword search populates thousands or more.
There are many ways to narrow down your search. For example, you can simply see only “live” entries, meaning applications pending examination and active registrations, by adding “AND LD:true” at the end.
CM:/.*KEYWORD.*/ AND LD:true
This sometimes helps, but dead applications and cancelled registrations can give you a fuller picture, so it’s not always a good way to perform your clearance search.
In a similar way, if you want to see only “registered” marks that are live, you can use “SA:registered”.
CM:/.*KEYWORD.*/ AND LD:true AND SA:registered
This gives you only registered marks that are still active. If you want to search for every mark that has been registered, including currently cancelled, you can drop the middle part.
CM:/.*KEYWORD.*/ AND SA:registered
Incorporate ICs.
Incorporating ICs into your search shouldn’t be hard. Just remember you should always put them in a three-digit format such as 001, 012, and so on.
IC:THREE_DIGIT
For example, you can search IC:001 to see all trademark applications and registrations for chemicals.
Because we wanted to narrow our search, we should add it to the previous search with a preceding “AND”.
Note, “OR” is used here because you are interested in both of ICs separately, not just trademarks that are registered for both ICs.
It’s important to note that if you want to use “OR” in tandem with other fields connected with “AND”, you should use parenthesis to get a correct search result.
I want to remind you that you can always use the “Expert” mode, left column to choose ICs, with coordinated toggle on/off, but the above should illustrate how to perform a nested search with parentheses.
Now, you have it.
Before I let you go. A word of caution. The narrower your search gets, the more you will miss.
Also, in practice, my search gets a little crazy with keywords. For example, I may use
CM:/h[ou]n[aeiou].*/
instead of
CM:/.*honey.*/
because I want to include marks like “huneyboo” in my result. FYI, the first regex will return more than double the total search results than the second regex. If you’re concerned about the alternative spellings but don’t know a thing about regex, you stick with the Wordmark search above illustrated.
If you’re not familiar with regex but want to learn more, just look up tutorials for regular expression, which is more widely used than you think and certainly not an invention by the USPTO.
If you are wondering if the invoice or bill you received by mail is legit, please read on.
Scammers consistently target US trademark applicants and registrants. Many of those have names bearing a close resemblance to the name of the United States Patent and Trademark Office (USPTO) such as Patent and Trademark Office, LLC.
First off, if you have hired a U.S. attorney to work on your trademark application, you can safely ignore all but your attorney. The USPTO do not contact trademark owners directly when it has other contacts such as an attorney of record.
Second, the renewal of trademark registration requires paperwork. You simply cannot extend the life of a trademark registration by just footing a bill. Hence, the USPTO never sends you a bill; instead, it accepts filing fees along with required paperwork.
Lastly, this goes without saying. But when you are in doubt, do not pay!
Well, I get that question a lot as an IP attorney. I have been working on trademark cases for about ten years now. In fact, one of the first things I did as a newly minted attorney in Chicago was to file a response to an office action rejecting a trademark application by YS bee farms.
Ever since, I’ve been working with small and large businesses to get their trademarks registered or help them enforce or defend their trademark rights in courts. These clients are more or less established businesses.
Then, Amazon Brand Registry happened, and everyone wants a registered trademark now. Literally, everyone. I get an email from an individual who wants to aspire to become a successful Amazon seller every now and then. Unfortunately, these online retail newbies often ask the wrong questions:
How much does it cost to get a registered trademark?
Well, it depends, if you want just something with ®, it would only cost you $250, seriously. If you want something of value, it can go way up.
Are there any requirements to get a registered trademark?
Well, ironically, the answer is a trademark. You’re registering a trademark you already have! (With an exception of ITU, of course.)
The question you should ask
A business experienced in retail always come with brand/name candidates instead of a product label already printed out. They ask me questions like:
“Can we use any of them?”
“What do you think is the best?”
“Are there any conflicting marks out there?
And the ultimate question: “is this a good one?”
These are all really good questions. Also, I hear them so often. When it comes to a certain mark there are always specifics that do not apply to other cases. However, there are repeating themes that are sort of universal. I want to discuss some of the universal tips.
Use TESS
Your brand name should be remembered. To achieve that, often you resort to tapping into your own memory and experience. Then, you come up with something familiar.
Now, familiarity is the enemy of a distinctive mark. You don’t want to pick something that has been used by another for many years. In fact, if there is likelihood of confusion between the old mark and your mark, you will be legally barred from using or registering the name.
TESS is an acronym of Trademark Electronic Search System. It’s a free and powerful tool. You can simply type up your candidate to see if there’s any identical trademarks that are registered, applied-for registration, or cancelled of registration.
I mentioned likelihood of confusion, which means you should also avoid similar marks. To find similar marks, you can do advanced searches on TESS as well. Advanced search needs some knowledge and practice. But, there are some easy things you can start right away.
Use $ signs to expand your search.
Let’s say your brand name candidate is “Aweriginal”. You can try “Awe$” or “$riginal”, which will return anything starting with awe- and ending with -riginal, respectively.
The dollar sign works fine in the non-advanced search option, “Basic Word Mark Search (New User)”.
Narrow it down to your market.
Well, the internet made all trademarks essentially nationwide. In other words, I’m not talking about the geographical market. On the other hand, you can still have identical trademarks used by independent entities. For example, you may use “Aweriginal” for your grocery store while “Aweriginal” has been used for decades by someone else for a beauty salon service.
Although there is no clear cut answer to what types of good/service can be said to be distinctive (or in different markets), you can more often than not rely on international classes. To narrow your search to a specific international class, you should use “Structured Search”.
Searching for anything with “awe-” in advertising and business category only.
In doing so, you can eliminate a lot of candidates that are too similar to already existing marks.
Use common sense
If your brand name reminds of someone else other than you, it’s not a good name. If your name tricks a customer into a belief that they are buying from someone else, it goes against the very idea of trademark: it should tell consumers where the good/service comes from.
Similarly, if your brand name simply tells what the good/service is, it’s not a good name. It should tell where it comes from, but not what it is.
Tips for good naming
I digress. This article is actually about how to give a good name. All I said so far is how to avoid bad names.
So, here are some hacks.
Tweak spellings
This is probably all too familiar. Our example “Awerigional” is indeed a tweak of “original” using awe- instead of “o”.
Use suffixes
If you are fond of a certain word or common name, you can add suffixes to it for extra distinctiveness. If I were to use my name “Jeon” for a trademark, I would soon realize there are more than 500,000 people with the same name in South Korea alone.
However, Jeonish, Jeonastic, and Jeonity are all pretty distinctive and easy to remember names if you’re already familiar with the “Jeon” name.
Make it simple
A catchphrase is very attractive, but it does not go far legally. It’s not to say that you can’t have a phrase registered as a trademark. In fact, it’s often easier to have a phrase registered than a word.
However, when it comes to trademark protection, it should not just protect against identical copycats but also against similar rip-offs. As phrases often convey a meaning, your competitors can easily claim that they’re just using the phrase for the meaning.
So, “it’s so deli-cious” is never be a good name for your delicatessen however tempting.
Use it properly
My final advice has nothing to do with naming. Nonetheless, if you’re using a good name the wrong way, it would be shame.
Don’t refer your product/service by just the trademark. For example, don’t call your specialty raisin bread Aweriginal. It should be Awriginal raisin bread. It’s true even if no other bread in your bakery is called Awriginal.
client spends about $710 including all government fees and other expenses to get a trademark registered.
