Hey guys! I wanted to talk a little bit about trademarks. There's a lot of background about what you need to get a trademark: the things that you should have ready, the things you should have searched online, how the trademark relates to your goods and services.
It is important to understand what the registration criteria are. This is the main criteria that the Patent and Trademark office uses to determine whether you're entitled to a trademark.
In this series, we have already discussed patent requirements. Distinctiveness is about how different and original your mark is. We also discussed in this post about likelihood of confusion ways to make your mark stand out from the crowd.
If you can get those two things down, you are way ahead of the curve from most applicants. Those two articles cover most of what you need to know about the world of trademark registration.
Today, we’re going to look at some tips that I think are helpful to get a good trademark, from picking it out to how to go through the process of registration.
It is always important to think about what is the type of mark that you're trying to get registered. You probably have a business name, a product name, a logo, your slogan or tagline, you have ways that you use your marks in relation to each other.
In my company, I use the phrase “innovate with confidence.” I want every inventor to have confidence when they innovate and my mission is to help them gain confidence and act with confidence in their innovation journey.
I use “innovate with confidence” as a tagline for my company, putting it in my emails and using it on our website. Because it is such a focus of what I do, I've gotten it registered as a trademark. It’s not a graphic or a jingle, but it's just as distinctive for what my company does.
From there, it is important to think about what you want to apply to be trademarked first? You don't need to apply for every single version, every orientation, every color scheme option.
The US Patent and Trademark Office will charge you a filing fee for each one you apply for. Part of the process is that they do an examination on every single different mark, and for each of those different marks you must specify one or more classes of goods and services. The fee they charge is per class.
So, if you have four marks and each of those has three classes, you would end up with four applications and three filing fees, which would be around $700 total for each of those mark applications. If you submit all four, you'd be paying upwards of $2500 just in application fees. The bare minimum is one mark with one class. One filing fee of between $225 and $275 dollars.
What I would suggest is that, if you've done a search and the results of that search show that your use of the words only (no colors, logos, etc.) and you think that you can show distinctiveness and that there's no likelihood of confusion, I would apply for that mark first because it gives you protection for those words any format that they might show up in the future.
It’s the broadest form of protection you can get. If, however, your search shows that you might have issues with distinctiveness or you might have issues with likelihood of confusion, you might opt to default to a different, stylized version of your mark that might include a logo and apply for that instead.
I suggest you go after whichever mark that you think you can get the fastest if you're trying to establish a brand. Over time, you could always go back and try to get more marks, more variations of your mark if you want to do that.
Do not underestimate the importance of doing a thorough search. It will lead you toward choosing the right type of mark for your needs. It also might help you see and overcome potential issues.
When I was looking to apply for my mark for Intellectual Strategies, my search led to the discovery of another company called Global Intellectual Strategies. What was more concerning was that they offered much of the same types of services that I do.
I knew that I was going to run into a problem with the likelihood of confusion. Somebody else owned that mark and I was trying to get a mark that was similar in language and in classification.
How did I overcome this issue? I contacted the owners of that other mark and we struck a deal. They were ready to sell it and I was ready to buy it for a very reasonable price and I was able to remove that likelihood of confusion. Then I was able to apply for the words only, the broad words without any stylization, mark instead and my ownership of the other mark actually helped me get my trademark for my business.
Creativity means nothing if you don’t have the information to back it up
When trying to get your mark, sometimes your solutions are not what they might seem and being able to approach the situation creatively can make a huge difference. But creativity means nothing if you don’t have the information to back it up. I only knew where this issue was and found a way to solve it because I understood the importance of being thorough in my search.
Another tip that I think people might overlook is that you want to make sure you have a domain name that fits your mark. The internet is more important now than ever in terms of reaching potential clients and marketing your business.
If you're going to have a website or be on social media, then you want to make sure that your domain names fit your mark. Maybe it isn’t identical, but you want there to be some fit with your mark in your domain name. You also want to do the same thing for any social media channels you're going to use.
You want your domains to link back to your mark because that is your brand, that is how they’ll know who you are. If, for some reason, you don't plan using social media, still choose a mark that aligns with your business. Your strategy for choosing a mark needs to be consistent.
My last tip for you is that you want to make it memorable. Make your mark something that ties into the experiences you offer.
If you are a product brand, you want it to designate the type of product that you're doing or have some association with it. This gets back to the idea of distinctiveness we talked about earlier in this series. But you should also think beyond the product. What is the experience you want your clients to have?
On the surface, my company offers people the opportunity to get patents and trademarks, start a business, and raise money. But what's the experience that my customers and clients get by working with my law firm?
We place importance on strategy, more so than most other law firms, and I highlighted that in the brand name. When I put Intellectual Strategies on my website, the word strategies shows up prominently, in order to show people what we approach our client experience in a strategic way and partner with those clients on their own strategy. You want to make your mark memorable.
There are lots of ways to make it memorable. Maybe you want to highlight your experience as being memorable. Maybe you’re memorable because your company name sounds cool, with solid word choices or a phonetic ring. Maybe your company name is a pun. Perhaps your color scheme and logo set you apart.
Whatever it is for you, use it and make the most of it. What are some names that are memorable? What are some marks or graphics that are memorable? Look at what stands out to you. Look at what you can improve in your product and your brand and your customer experience to make your mark more memorable.
Your trademarks are the tools of your business, don’t underutilize them. Put these tips into practice as you're choosing your mark preparing for the examination process. Think about how you use your mark.
If you really understand how to deliver your best products and services to your customers, then you're going to be way ahead of the curve in terms of both your legal protection for your brand as well as maybe even your fundamental branding and messaging itself.
And if you need help finding the best way to strategize for your brand and your mark, we here at Intellectual Strategies are happy to assist. Check out our upcoming DIY/30 Challenge to help you on your path to building a better trademark.
I recently had a Q&A chat with a friend and fellow business owner about all things TRADEMARKS.
Making sense of the Likelihood of Confusion so your own likelihood of confusion about Likelihood of Confusion has a low likelihood of being confusing.