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Four Things to Know Before Filing for a Trademark **Attorney Advertising**

Filing for a trademark requires time and money. as such, you’ll likely want to be as prepared as possible heading into the initial application process to avoid unnecessary setbacks. If you are planning on filing a trademark application, the following four items should be considered before you submit your application with the United States Patent and Trademark Office (USPTO):


  1. Is anyone using the same trademark or one that’s confusingly similar? Before you start the application process, you’ll want to conduct a trademark search. If you find that someone else is already using the mark you want, or one already exists in the same class and it’s confusingly similar, you risk the chance of rejection. Where should you search? The Trademark Electronic Search System or TESS is a great place to start. You should also conduct searches on  Google, Bing, Amazon, Ebay, etc. as someone may be using the mark without it being federally registered which may afford the other party common law rights.
  2. Decide who will own the trademark. The owner of trademark may not necessarily be the name of the person who fills out the application. As a source identifier, the trademark application should be in the name of the person or entity providing services or products. If the mark will be used by a corporation, LLC or other entity, you’ll want to file in the business name. Of course, it’s possible to also own a trademark as an individual, but choosing the wrong owner can invalidate your claim.
  3. Identify the goods or services you provide. You will be asked on your application to choose a classification of goods, services or a combination thereof for your mark. Selecting the wrong choice could prevent registration or may box you into a situation that you can’t fix later. Ask yourself: “what do customers purchase from me that I use the trademark on?” Do they buy a physical product like t-shirts or do they buy a service from you, such as custom embroidery of t-shirts? Maybe you provide both goods and services; perhaps you sell t-shirts on your website, but you also offer a service for custom designs. Getting this right is critical; once the application is filed you can’t add additional goods and services later, and you can’t switch back and forth if you get it wrong.
  4. Are you already using the trademark in commerce? This will determine how you need to initially file. If you are already using the mark, you’ll file on a Section 1A Use in Commerce basis. Use in commerce is trickier than most think. The mark needs to actually be used in US commerce in a way that your customers associate your product or service with the trademark. Just opening an entity with the name or putting up a website is not enough. If you are not yet using the mark, you’ll need to file on a Section 1B Intent to Use basis.


If you are unsure about any of these four items, it’s in your best interest to talk to an Intellectual Property attorney before you file. Working with an attorney will help ensure that all of your “ducks in a row,” and will ultimately help you avoid headaches or costly setbacks down the road.  Our Intellectual Property attorneys are available to answer your questions and guide you through every step of the trademark process. To schedule an appointment, call us at 888-666-0062.




DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.

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