March 26, 2015

Trademark Filing Strategies

by Guest Blogger


Common Sense Trademark Filing Strategies

If you are using a name, word or symbol to sell goods or services, you have a protectable mark.

Before you spend the money to file an application to federally register the mark with the U.S. Patent and Trademark Office (USPTO), consider the following.

What Goods and Services Should I Include?

How narrowly or broadly should your identification of goods or services be drawn in a USPTO trademark application? Generally, you are going to receive the most protection from the broadest identification of goods and services you can get through the USPTO.

For example, if you own a food truck that sells grilled cheeses, I would avoid: "food truck services offering grilled cheeses" and instead try for something like: "restaurant services; catering services; mobile food truck services." This description is arguably accurate and encompasses closely related services that non-food truck competitors may offer. In addition, all of these services fall within a single International Class as defined by the USPTO, meaning that the filing will generate a lower government fee.

If the USPTO finds the descriptive of goods or services too broad, it will provide an opportunity to for a narrowing amendment. Be sure that you are accurate and truthful in the goods and services you include otherwise any resulting registration will be susceptible to challenge and cancellation.

What If I Have Plans to Expand My Business?

Not using the mark on all of the goods or services yet? You may file the entire application based on your intent to use the mark in the future and show use of the mark later to receive a registration. The trick is that the entire application must share a single filing basis.

My rule of thumb is that if you have plans to sell the goods or services in the next six months to one year, include them in the application. If not, include only those goods and services that are being sold and plan to file a new application in the future. Otherwise, the benefits of registration are unnecessarily delayed.

There is a procedure for "dividing out" goods and services form the original application and creating two applications from one, but my experience is that this process adds significant expense and delay.

Design (Logo) or Word Mark Only

As a general rule, registration of a word mark in an block type using standard characters. Standard character filings must meet the following requirements:

The mark does not include a design element;

All letters and words in the mark are depicted in Latin characters;

All numerals in the mark are depicted in Roman or Arabic numerals;

The mark includes only common punctuation or diacritical marks; and

No stylization of lettering and/or numbers is claimed in the mark.

(See for a complete list of standard characters).

A standard character mark protects the wording without limiting the mark to a specific font, style, size, or color and thus provides broader protection than a "logo" mark (also known as "special form drawing").

There are exceptions. Sometimes a word mark alone is likely to be refused on grounds that it is merely descriptive or confusingly similar to another registered mark, but with the additional design component these risks are reduced.

There are also cases in which the design element is a critical component of the mark and is itself more susceptible to infringement than the word portion of the mark. In these cases, the trademark significance of the design is critical to the distinctive impression created by the mark and warrants protection.

Ideally, if the mark is sometime used with the design element and other times without it, an owner should consider filing two separate applications â one for the word mark alone and the other for the word and design mark.

Color or Black and White

I almost never recommend filing a trademark in color (or in trademark speak "claiming color as a feature of the mark"). The reason is that again - the resulting protection will be unnecessarily narrowed. A black and white drawing of a mark covers the mark as used in any color.

The only exception here â and it is rare â is when the color itself serves as the mark or serves as the most distinctive part of the mark. These are unusual cases that require additional filing strategy considerations. Again, if cost is not an issue, filing for various versions of the mark including a color version does not hurt.

Filing a trademark application is not inexpensive and often good decisions on the front end determine the value of the protection that results.

The lawyers at Trademarkology provide trademark registration services backed by the experience and service of one of the nation's oldest law firms. Click here to contact us.