Following the right trademark strategies and best practices will help you secure the strongest trademark protection available. Many thousands of trademark registrations are granted that are void ab initio (invalid from the start). Even more trademarks contain unnecessary limitations that diminish the scope of their protection. We practice intellectual property law exclusively and have prosecuted thousands of trademark applications including appeals and contested proceedings. Here are a few key points to keep in mind.
1. Pick a strong mark
The best trademarks never describe the branded product. For example, GOOD BEER™ is a worthless brand. BEER is generic for the product and GOOD is merely laudatory. The USPTO will not allow your company to remove generic terms out of the public domain as privately owned trademarks.
On the opposite end of the spectrum, brands like SHOCK TOP®, ROLLING ROCK® and IRON HORSE® are “arbitrary.” They do not describe or suggest what the product is. Therefore, arbitrary (e.g., APPLE®) or coined (e.g., KODAK®, EXXON®) marks are the strongest.
We work with many branding experts who understand trademark strategies and investing in a unique brand will provide better protection down the road.
2. File early
One of the key advantages of federal registration is getting national constructive use. What does this mean? It means that when we file a federal trademark application it is the legal equivalent of selling your product or service in all 50 states. This strategy is true with either an in-use trademark application or an intent-to-use (ITU) application.
3. Use a legal entity
Never file an application as an invididual. Always use an LLC or corporation entity. This is particularly true for ITU applications which cannot be transferred as a separate asset until they have been converted to an in-use application. However, they can be transferred with the LLC or corporation as a whole.
Be absolutely certain your company is in good standing with the Florida Division of Corporations before you file and when you renew. Otherwise, the declaration you just signed is void and your registration is either invalid or abandoned.
4. Words only
A important tip for a good trademark strategy is what to register. Logos tend to evolve but the words in a trademark generally stay the same. File a “standard character claim” which is represented in all caps. This permits the registration to cover any font, stylization or in combination with logos and graphic elements.
5. Logos should stand on their own
Logos like the Mercedes Benz star or the Pepsi semi-circles stand on their own. Do not file them with words. Less is more in trademark filing strategy. Logos are generally filed as “stat” images which are pure black and white. No color or shading. This gives the registration the broader scope to cover the logo in any color scheme or shading.
These five trademark strategies are just a start to developing a comprehensive brand strategy. As you invest more in your reputation, your trademark gains value and should be protected with the highest level of expertise. Contact us for more information.
More info on trademarks…
For a litigation-grade trademark registration we often start with a knockout search. If the mark is a reasonable candidate for registration, budget approximately $955-$1,600. The process takes about a year and once granted, budget around $100 per year to keep a federal trademark in-force with renewals. No attorney can ethically guarantee a trademark will grant. The examination process at the U.S. Patent & Trademark Office (USPTO) is adversarial and even when approved by the trademark examining attorney, every mark must be published for opposition for one month wherein private parties can oppose the registration of a trademark.
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