5 key moments before to apply for trademark protection

Many people believe that the most important part when you want to register a trademark is the registration procedure before the Patent Office.

This is a wrong view for the most part. There are some crucial moments regarding every trademark protection that have to be taken into account even before filing an application. This can define to what extent you will be able to register and use your trademark successfully.

1. Define what type of trademark you want to register:
   • Word mark – in that case your mark will be registered only as a word. For example: NIKE.
   • Combined mark – this mark consists of both word and graphic parts. For example the Adidas’ mark:
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   • Figurative marks – they cover only graphics without text. For example:
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   • Three-dimensional marks. They consist of the product’s forms. One of the most well-known examples of such a trademark is that of Coca Cola’s bottle:
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   • Other trademark types such as sound marks, smell marks etc. Bear in mind that you can choose only one type of trademark in your application. If you want to register all of them you need to file separate applications.
2. Be sure that your sign is not excluded from trademark protection. Trademark law prohibits registration of signs that cannot serve as a source of trade origin. They can be:
   • clearly descriptive signs;
   • signs that are not distinctive;
   • deceptively misleading signs;
   • geographical places of origin of goods and services;
   • signs consisting of flags, arms and other official emblems of states or international organizations which are registered in accordance with Article 6 of the Paris Convention;
   • signs contrary to public policy or accepted principles of morality.
   • etc.
3. Define the classes of goods and services for which you want your trademark. Every trademark application includes a list of the so-called Nice Classes of goods and services. The scope of trademark protection is valid only for specified goods and services. This means that your monopoly over the sign is limited to those classes. One simple way for classification is to use the TM Class tool.
4. Do a preliminary trademark search. This is absolutely critical moment. You need to check the Patent Office’s trademark database whether there are identical or similar trademarks for the same classes of goods and services. If this is the case it could mean that third parties can oppose your trademark or even sue you for a trademark infringement in case you start using the mark.
5. Consult a registered Trademark Attorney. The legislation in most of the countries allows a trademark application to be filed personally by the applicant. This can save some money from attorney’s fees. However, this hides some traps. In case you don’t have the necessary legal knowledge of how to go through the registration procedure it can lead to a refusal or opposition against your trademark. From that perspective you can lose not only your application but to waste some money. So you need to think carefully to what extent you are prepared to do the job and whether you need help in order you to avoid legal pitfalls.

More or less these are some of the main steps that you need to consider before filing a trademark application. They can save you time and money if implemented well.

In case you want to learn how to do a preliminary trademark search on your own, in order to select the best brand name for your business, check this new Udemy Complete course on trademark search.

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