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5 TRADEMARK BASICS THAT ALL ENTREPRENEURS SHOULD KNOW

1. Obtain help from an experienced attorney

Well, this one is a given! While anyone can file a trademark application with the USPTO on their own, it would be wise to seek help from an experienced attorney. Hiring an attorney to guide you through this process is typically less expensive than the costly mistakes you run the risk of incurring when completing the application on your own. Trademark attorneys, among other things, know what and where to search for potentially confusing marks; whether a mark has a strong chance of achieving trademark registration; which class is best to register your mark; and how to properly respond to the USPTO Examining Attorneys regarding your application. Save yourself the headache and the expense and just hire an attorney beforehand.

2. Complete a Thorough Search Before Choosing a Business Name

Choosing the right business name seems simple enough, however, if not well thought out, this can prove detrimental for entrepreneurs. An important consideration when choosing the perfect moniker for your entity is to ensure that you are not infringing upon another company’s trademark. To avoid this pitfall, you should conduct a thorough trademark search of your potential business name before expending resources on branding and marketing. The last thing you will want to receive is an aggressive letter from another company’s attorney informing you that you are infringing on their trademark.

3. Some Marks May Not Be Eligible for Trademark Protection

Before filing a trademark application, entrepreneurs should ensure that their marks are strong enough to be afforded trademark protection. Some marks are not eligible for trademark registration, because they are either descriptive or just too generic. Therefore, to achieve maximum trademark enforceability, business owners should choose a mark that is either fanciful or arbitrary. Such marks are inherently distinctive and they immediately function as a source identifier.

A fanciful mark is typically a word that has no meaning – the most common being “Xerox” or “Microsoft” – and is afforded the strongest trademark protection. An arbitrary mark is also afforded strong trademark protection and is simply a word that has no connection to the meaning. The most common examples of an arbitrary mark are “Apple” for computers or “Blackberry” for cellular phones. The next best thing to a fanciful or arbitrary mark is a suggestive mark. A suggestive mark is one that simply suggests the quality of the goods or services, such as “Netflix” or “Kitchenaid.”

4. Choose the Right Class 

An essential component of the trademark application process is determining which class or classes to register the mark. Identifying the correct class can be overwhelming and confusing for entrepreneurs, as many goods or services associated with their mark may overlap with other classes. The USPTO offers 45 classes of goods and services from which to choose, however selecting the wrong class can be a costly mistake. Making a mistake at this step is crucial because the USPTO will not allow you to amend your application once it has been filed. This means that if your mark is filed in the wrong class, you will have to pay another fee in order for your mark to be protected in its correct class. For these reasons, most applicants hire a trademark attorney for help. 

5. Trademark owners are required to police their own mark

Finally, and most importantly, the USPTO does not enforce a registrant’s trademark rights. It is the sole legal responsibility of the trademark owner to police their mark and to protect it from infringement. Therefore, only the registered trademark owner can pursue legal action against others infringing on their mark. A failure to enforce or maintain a mark can result in the loss of trademark protection. Some ways to police your mark include:

  • Notifying others of your trademark status by using the registered trademark symbol ®;
  • Immediately making objections to any trademark filings that you feel may potentially infringe on your mark;
  • Hiring an attorney to pursue legal action against those infringing on your mark; and
  • Properly maintaining your trademark with the USPTO to avoid having your mark deemed abandoned.

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