This guide will help you make a decision to start the trademark process

Often, clients come to me really excited to work together to register their trademark. We hop on a phone call, and I ask them some questions. At that moment, I’m trying to gauge whether it’s a good fit and the likelihood of trademark approval. 

Of course, I have to do my own research, but I’ve also picked up on some cues that raise red flags. When I hear one of those cues, I have to let the client know that maybe they aren’t ready or it’s time to go to the drawing board with their trademark. 

Knowing whether or not you should register your trademark is difficult. There’s also this underlying pressure that you feel from other business owners to take the next step, but you’re not even sure if this is the route you want to take.

It takes some research but there are also mindset issues that clients need to work on to make this decision. This 5 step guide will give you the clarity on whether you want to take that next big step in your business and register your trademark. 

1. Name you chose is similar to another registered trademark
   

   If you’ve looked on Google or TESS (Trademark Electronic Search System), and found a trademark that is similar to yours, then you want to hold off on registering your trademark.
   
   First, if the registered trademark owner is monitoring the trademark, then you’re bringing unwanted attention to yourself. The trademark owner can and should send you a cease and desist letter. With that letter, sometimes come with a demand for money. Additionally, if you refuse to change the name and go forth with filing, you’ll also receive an office action from the trademark office. This office action will state they are rejecting your trademark for likelihood of confusion. Likelihood of confusion is when your mark is very similar to a registered trademark or pending trademark application. The ™ office believes that consumers will confuse your trademark with the registered one.

2. The trademark you’re using is a common phrase
   

   So many businesses and celebrities try to register viral phrases. It’s getting much harder to register these phrases because the Trademark Office considers them common. If you are trying to trademark a viral phrase, make sure you register it immediately before it becomes “common”.
   
   If you wait a while, then it’s best not to register, because the ™ Office will likely reject it. They do not believe that these phrases are source indicators for a product or service and therefore, not registrable. Usually you’ll be issued an office action. You have the option to respond and argue that your phrase isn’t common.

   

3. You are only selling your product or service locally

   If you have no intention of expanding outside of your city and you don’t sell online, then you don’t need to register your trademark. Trademark registration gives you the national rights to your brand, but there are certain guidelines you have to meet.

   If you have no intention of expanding outside of your city and you don’t sell online, then you don’t need to register your trademark. Click To Tweet

   One of those guidelines is that your trademark needs to be used in commerce. Use in commerce refers to the product being sold and shipped within the United States in the ordinary course of trade with the mark preferably displayed on the product itself or on external materials such packaging, tags and labels.

   This means if you’re only selling to locals, then you would not qualify for trademark registration. There are some exceptions, but we won’t be discussing that in this post.

4. You haven’t found your forever name

   If you don’t like the name of your business, then don’t waste your time or money registering a trademark. Once you’ve chosen a name that sticks, then you can start the registration process.

   I’d also add that if you don’t love your logo, hold off on trademark registration for the logo.

5. You won’t monitor or defend your trademark
   

   Trademark registration isn’t over once you get the certificate. Now is the hard part. Now you have to stop people from using your trademarks without your permission.

   If you have no intention on keeping up with others and forcing them to remove your registered trademark from their products or services, then you’ve wasted a whole lot of time and money.

   If that’s just something you don’t want to do or hire your attorney to do it for you, then skip out on trademark registration. Not monitoring and defending your trademark can lead to a generic mark, which no longer has legal protection. See the guy that registered the trademark for “escalator” and look at how that turned out for him. *Spoiler alert* Escalator is no longer a registered trademark.

If you’ve gone through all of these points, you should now have a better understanding about trademark registration. And as a trademark attorney, I honestly believe that not every business needs one. If one of these reasons resonates, take a step back and really think about whether it’s right for you. 

Do you think your business needs one? 

If you’d like to learn a bit more about the trademark process, then grab the roadmap below. It’s a step by step guide of what to expect when going through the registration process.