What procedures should I use when choosing a name or mark for a trademark?

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Jeffrey Johnson is a legal writer with a focus on personal injury. He has worked on personal injury and sovereign immunity litigation in addition to experience in family, estate, and criminal law. He earned a J.D. from the University of Baltimore and has worked in legal offices and non-profits in Maryland, Texas, and North Carolina. He has also earned an MFA in screenwriting from Chapman Univer...

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UPDATED: Jul 16, 2021

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The key to a successful trademark is protection. It’s a good idea to establish a unique trademark that will remain protected throughout its use. Thankfully, the federal courts have provided four guidelines for creating highly protected trademarks.

Four Guidelines for Creating Protected Trademarks

The first guideline established by the court is the strength of the trademark. This strength test accounts for the public’s overall acceptance and recognition of trademarks. For those creating a trademark, this means that your mark should be so distinct that it remains in your customer’s mind. The best way to determine if your trademark will meet this standard is to conduct public surveys before deciding on your final mark.

Second, consider the similarity between your trademark and your competitor’s mark. Ideally your trademark will be completely unique from your competitor’s, guaranteeing that if anyone attempts to copy your trademark, the fault will be obvious. To ensure that your trademark meets this requirement, consider selecting a trademark specialist or even a graphic designer to form your mark.

Next, trademarks should make use of both pictorial and alpha-numeric images. This recommendation is so vital that it is directly listed on the federal trademark office website. Trademarks that are pictorial and also use words or numbers have a more precise description on their submission paperwork, securing greater protection.

The fourth requirement is avoidance of trademark confusion. This goes hand in hand with competitor similarity in that your trademark should ideally use independent fonts and images. Even if your trademark has a look or feel similar to a different type of trademarked product, there is a chance that it will not be granted as much protection should someone else copy your trademark.

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After Your Trademark Has Been Created

Once your trademark is created, visit the federal trademark website and follow these steps:

(1) Determine if the trademark is capable of registration and protection.

(2) Search to determine if someone already owns the trademark.

(3) Begin the registration process for the trademark as soon as possible, either on the basis of use (if you have made use), or “Intent to Use” if you intend to use in the future. Remember the “Intent to Use” law requires a “bona fide intent to use.” Bona fide intent is not generally questioned. The purpose of requiring such intent is to prevent someone from filing a collection of trademarks and “warehousing” them, for purposes of later resale.

(4) “Police the mark,” i.e. set up procedures to watch for trademark infringements and take appropriate action to get the perpetrators to stop such infringing uses.

Getting Legal Help

If you are planning to trademark your intellectual property and have additional questions about the procedure of trademarking, it’s in your best interest to contact an intellectual property lawyer or trademark lawyer in your area.

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