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…

Trademark

Policing your trademark is an important task for maintaining the strength of your trademark rights. There are passive and active approaches:

  • Waiting until instances of confusion arise between your brand and that of a third party.
  • Periodically searching the Internet and industry for potentially infringing brands.

If your trademark has real value, you’ll want to proactively monitor the U.S. Patent & Trademark Office trademark application filings to determine if anyone is seeking rights to a confusingly similar brand. It is difficult for even the most experienced trademark attorneys to do this manually because one must look not just for “identical” trademarks, but those with:

  • phonetic similarity;
  • orthographic similarity and misspellings;
  • prefix, infix and suffix variations;
  • vowel and consonant similarity;
  • plurals and stemming;
  • abbreviations and acronyms; and
  • other similarities

Well-informed brand owners and intellectual property practitioners set up sophisticated trademark watch services for an annual fee. Every 1-2 weeks, the monitor queries trademark databases in the U.S., Europe and in other countries for newly filed applications that could infringe the trademark owner’s rights.

Flowchart of a trademark watch monitoring service
Smith & Hopen Trademark Watch Service
Category: Trademark

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Anton Hopen

U.S. Patent Attorney with smithhopen.com.