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  • Kiranjit Dharsan

5 things to consider before filing your trademark in USA

Updated: Nov 8, 2021

So, you’ve decided to begin the process of protecting your trademark in the United States. Realizing and understanding the importance of protecting your intellectual property is indeed a very important milestone in your business journey. Naturally, you will have many questions about the trademark registration process and how best to protect your business interests in the market.

In this blog, we aim to give you a short guide to make the process less intimidating!

Before you begin your trademark registration process, you should have the following already decided on.

The trademark to file.

If you’ve been using a specific brand/logo on your goods and services, you might think that trademarking that brand/logo is the way to go. However, you should consider whether it would be better to register the trademark in standard characters and non-color mark gives you broader protection, or in the form you are currently using the trademark, for example, with words and other distinctive elements, including color.

As far as possible, assuming there are no foreseeable objections during the examination, you should consider filing your trademark in standard characters.

Classes of Goods & Services.

Your trademark is protected for specific goods and/or services. Next, you’ll need to determine the relevant class(es) and list of goods and/or services for your trademark. To determine the class of goods/services, you should look up the NICE classification. There are 45 classes of goods/services. One way to figure out the classes and goods/services for your trademark is to conduct an identification search.

It is extremely important that the list of goods/services and classes are accurate so that your trademark registration grants you the best possible protection. Understand that your trademark registration protects you specifically for the classes of goods and/or services registered. So a mistake in classification limits your rights.

The country.

As you may know, IP and trademark rights are territorial. So, if you only intend to stay within the US market, then a US trademark should suffice. But, if you plan to tap into an overseas market, then you must register your trademark in each country you will be offering the goods/services.

There are two ways you may go about doing this. You may file your trademarks nationally or internationally through the Madrid Protocol system for the relevant member countries. The Madrid Protocol system is a convenient and cost-effective solution for registering and managing trademarks worldwide.

Claiming priority.

Claiming priority is another cost-effective strategy that you can employ when you plan to file your trademarks in other countries. When you first file your trademark in one country, you have six months to file your trademark in other countries and keep the same filing date from your original application in your overseas applications, even though it is filed later.

Companies often use this approach as they expand into other markets cautiously as it gives them some flexibility with costs.

Your filing basis.

For US trademark applications, there are 5 filing bases that you may file your trademark based upon. They are intent-to-use or upon actual use in US commerce. Each basis has a set of requirements you will need to meet. For example, if your trademark is based on actual use, a specimen of use would be required. A specimen lets the authority know-how and the type of good your trademark is protecting.

We understand that filing and registering a trademark requires a fair bit of discussion. You might have a lot of questions like how does a trademark protect your business interest? If you have questions about registering your trademark and would like us to help you, click here to write to us for a fee quote or schedule a short call with one of our trademark attorneys. For small businesses and startups, we offer special consultation rates get in touch with us today!

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