The Trademark Checklist: 7 Steps You Must Take Before Filing
Not a day goes by that I don’t get a call from a distressed business owner who – after using one of those ‘trademark filing’ services online – contacts me because their trademark got rejected.
And it always brings to mind the origin story of the lucky horseshoe.
Legend has it a blacksmith (who later became St. Dunstan) was approached by a man who asked that horseshoes be attached to his own cloven feet. Dunstan recognized the customer as Satan and explained that he must shackle him to the wall to perform the service. While hammering, Dunstan deliberately made the job so excruciatingly painful that the bound devil begged for mercy. He refused release until the Devil promised to never enter a house where a horseshoe was displayed from the door.
Hence the reason today’s door “knockers” look like horseshoes.
The application for and granting of a trademark is a process. One in which several steps must be taken. Not paying proper attention to any one of these steps can easily cause your trademark to be rejected. And not a horseshoe, rabbits foot, four-leaf clover or any other good luck symbol will help you otherwise.
For this reason we always use our “Trademark Checklist” before filing. This ensures we don’t leave anything to luck and gives you the best chances of getting one.
Let’s take a closer look at these 7 steps.
- Before filing for a trademark you should perform a search to see if it is available.
- There are multiple trademark categories (45 to be exact). If the search results show your word or phrase is already "taken", you still may be able to use it if your product or service falls into a different category
- Be careful of spelling when searching for a mark. Your mark cannot be "confusingly similar" to other marks (example: you cannot trademark Nyki because it sounds too much like the shoe brand Nike)
- If your mark is available, you still may not be able to get a trademark if it is too descriptive of the product or service
- When filing the trademark it is better to leave the category blank and let the trademark examiner decide what category your product or service falls into (there are other tricks to filing that make it more likely your mark will get approved)
- If your trademark is not filed properly you will receive an "office action" from the trademark examiner. This is a document that basically says "We do not approved your trademark for reasons x,y, and z". It is then your responsibility to respond to this action with your argument on why you should get the trademark. Hiring a lawyer to respond to an office action is generally more expensive than hiring a lawyer to fill out the trademark application in the first place.
- You can file in multiple categories. Some places charge you multiple times for this. We don’t.
If you need help trademarking your name, then we’ve prepared a short package to guide you through the process. It’s absolutely free for people who need to get their name protected. You can get a copy one of three ways:
1. Request your copy online at http://ideaattorneys.com/free-patent-information/free_trademark_information_request.html
2. Call us at 1-866-New-Ideas (1-866-433-2288)
3. Or if you’re in the South Florida area, stop by our Coral Springs office at 11575 Heron Bay Boulevard suite 309