If you are an Amazon seller, there are many good reasons for getting a federal trademark registration for your brand or product name.
Perfecting your exclusive rights and enrolling in the Amazon Brand Registry each require federal trademark registration. Many eager sellers are surprised to learn that the trademark registration process can be complex and take months (or longer). So, here are some steps to effective trademark registration:
1. Get help from an affordable trademark attorney.
Like many things, it’s possible to get a trademark registration yourself—you will save some money if you pull it off. But, trademark registration is a legal process with several hurdles. One Stanford study shows that DIYers succeed less than 50% of the time. Delays, failure, wasted filing fees, and costly rebranding can be painful.
Online trademark filing services (e.g., Legal Zoom) can be a bit better than DIY, but they still skimp to keep costs down, which can lead to similar problems.
Importantly, the USPTO “strongly encourage[s]” use of a U.S.-licensed attorney who specializes in trademark law. Traditional law firms can be too expensive for many folks.
According to the American Intellectual Property Law Association (AIPLA), solo attorneys or small firms are typically 32% less expensive than their peers at larger firms. So, using a good solo or small firm trademark lawyer is a great option.
2. Pick the right type of mark.
Many companies approach the trademark registration process with a brand already selected. But, if you are still in the process of selecting a trademark, picking the right type can make a big difference in successful registration. The registrability of a trademark often varies by how distinctive it is. Generally speaking, if your brand is generic or descriptive of your goods, it’s difficult to protect. Here are some examples of brands that are too generic or descriptive to register:
- SAFARI for hunting expedition hats and jackets
- ULTIMATE BIKE RACK for bike racks
- SHARPIN for knife sharpeners
On the other hand, if your brand is more distinctive—taking more thought or effort to directly connect to your goods—it’s easier to protect. Here are some examples of brands in this category:
- CONTACT for self-adhesive paper
- SKINVISIBLE for medical adhesive tape
- IVORY for soap
You may want to avoid using your personal name or nearby geographic terms for the same reasons. Logos can often be registered because they tend to be more distinctive. But, logos usually have narrower protection than word trademarks.
3. Conduct a comprehensive trademark clearance search.
One of the biggest obstacles to successful trademark registration is the existence of confusingly similar, prior marks by others. These marks may be registered or unregistered. So, it’s important to conduct an investigation of the landscape into which you are launching your brand and trademark application. One way for a DIYer to start such an investigation is by checking for similar brands on the USPTO’s Trademark Electronic Search System (TESS).
But, since a prior mark doesn’t have to be identical to cause liability or trademark application problems, proper clearance searching and analysis is best performed by a good trademark lawyer who knows what to look for and how to analyze the results.
Also, if there are potential obstacles, a trademark attorney is best positioned to help you recognize and understand them, as well as to understand your options and alternatives for moving forward.
4. Prepare and file the application with fees.
Actually preparing and filing a trademark application is one of the easier steps of the registration process and may be done online with the USPTO. For a variety of reasons, it is usually best to file what is known as an “intent-to-use” or 1(b) trademark application. Applicants should use existing goods and services descriptions from the USPTO’s Trademark ID Manual if possible.
The USPTO has a variety of good online resources explaining the trademark application process, including factors to consider when deciding whether to hire an attorney to represent you.
5. Respond to the examiner (if needed).
Once an application is filed, it is assigned to a USPTO examining trademark attorney. The USPTO attorney will review the trademark application under the many legal factors under which the mark must pass to obtain registration.
If proper clearance searches have been conducted and the application tailored, properly drafted, and filed, few issues typically arise. Regardless, sometimes the trademark examiner identifies legal issues or problems and will issue an Office Action to which the applicant must respond. If the issues identified are small, the response can be relatively easy, overcoming the issues raised.
However, if the issues are significant, a proper response may require legal briefing complete with citations to case law, administrative decisions, and/or evidence. Again, a knowledgeable trademark attorney can make a big difference in these situations.
6. Submit specimens and first sale dates.
At a certain point in any trademark application, commercial specimens (e.g., packaging or online listings) showing the mark used in connection with the applied-for goods must be submitted to the USPTO for approval, along with the dates of applicant’s first use of the mark in commerce (e.g., sale).
There are a variety of things to consider here, but it is important that the specimens submitted and applied-for mark match up – if there are differences between the two, the application can be rejected.
For a complete breakdown of the USPTO procedures and some of the caselaw relating to trademark application and registration see the USPTO Trademark Manual of Examining Procedure (TMEP).
7. Post-registration steps
It is important to know that once you have a trademark registration, you’re not done. To maintain rights granted from federal trademark registration, you must take further action.
For example, maintenance and renewal documents and fees are due to the USPTO at certain intervals. Also, registrants can either add to or detract from the value of a trademark depending on how they use and police it.
Finally, registrations are static, but the use of your mark is often dynamic. Additional applications may be required to cover expanded product lines, expansion to other countries or markets (including sourcing), or to account for new styles or forms of the mark.
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Preston P. Frischknecht is the principal trademark attorney at Brand Registry Trademark.
Brand Registry Trademark is a small intellectual property law firm specializing in legal services for online sellers throughout the United States and abroad.