How Can Trademarks Be Registered Cost-Efficiently?


    How Can Trademarks Be Registered Cost-Efficiently?

    Securing a trademark without breaking the bank can be tricky, so we've gathered insights from attorneys and directors who specialize in intellectual property. From complying with TEAS Plus standards to utilizing the USPTO's TESS resource, explore the twelve cost-effective strategies they recommend for navigating the trademark registration process.

    • Comply with TEAS Plus Standards
    • Consult a Trademark Attorney
    • Register Trademarks Early
    • Conduct a US Trademark Search
    • Understand Trademark Competition
    • Clear Proposed Marks Thoroughly
    • Retain Experienced Local Counsel
    • Conduct Thorough Trademark Searches
    • Finalize Mark Details Before Filing
    • Select Strong, Distinctive Marks
    • Avoid Generic or Industry-Specific Words
    • Utilize the USPTO's TESS Resource

    Comply with TEAS Plus Standards

    If possible, make sure your application complies with all of the USPTO's TEAS Plus standards so you can qualify for the reduced filing fee. Most importantly, consult the Trademark ID Manual and use a pre-approved description of your goods or services. Also, if you are filing for a foreign word, include an English translation. If you don't, the examiner will require the translation during the prosecution of the application, which will delay the process.

    Linda KattwinkelIntellectual Property and Arts Attorney, Owen, Wickersham & Erickson, P.C.

    Consult a Trademark Attorney

    My top piece of advice for cost-effective trademark registration is to work with a trademark attorney. Specifically, before you file an application, or even start using your brand name, ask your trademark attorney to conduct a preliminary trademark registrability and clearance search. Doing so will let you know whether your trademark application will likely be successful or if you should select a different brand name before you spend any more time and money. I have seen too many businesses invest considerable resources in marketing and attempts to register a mark, only to find out that they can't register or even use that mark.

    Trademark registration is nuanced, and working with a trademark attorney when applying to register your mark will ensure that the application is done correctly the first time, preventing costly re-submissions. Working with an expert and doing some due diligence ultimately protects not only your trademark rights but also the funds you need to make your brand a success.

    Alandra Adams
    Alandra AdamsTrademark Attorney, Kunzler, Bean & Adamson

    Register Trademarks Early

    As an IP litigator who frequently appears in court on trademark matters and claims for passing off, my first piece of advice is to secure the important trademark registrations early and don't get too fussed about cost; litigation for unfair competition without the benefit of a trademark registration deprives the rightful owner of many statutory advantages conferred through registration and is much more expensive. As the old saying goes, 'a stitch in time saves nine.'

    My second piece of advice is, where possible, secure a registration for both goods and services to ensure your statutory rights secured through registration are as broad as possible. The courts take a very technical view when assessing the scope of registered trademark rights. Make sure yours are as broad as they can be to prevent infringement and unlawful comparative advertising.

    James Buchan
    James BuchanIP Partner, Gowling WLG

    Conduct a US Trademark Search

    Begin with a trademark clearance search in the U.S. Trademark Office database. The search should tell you and your client what other marks are in the database that are similar in sound and/or appearance to the trademark in question. With this information, you can determine whether it is worth the time and expense to file a trademark application and go through the prosecution process. Searches have ended up saving my clients a lot of money.

    Charles Sara
    Charles SaraPatent and Trademark Attorney, DeWitt LLP

    Understand Trademark Competition

    My plan was always to patent my new product design, but I thought of trademarking as a straightforward process, not requiring much thought and easily done directly through the IPO in the UK.

    After I trademarked my business name, I came up with a product name, but when I tried to trademark it, the name was challenged by the IPO very quickly, even though I had checked there were no other competing names in my product category.

    It turned out the IPO looks at the top-level category for the product, not the drilled-down categories actually chosen for the product, so it wasn't just names in the kitchen appliance market that I was competing with, but everything under electrical goods.

    Fortunately, the competing company had recently ceased trading and didn't challenge the name, but I took advice on the cost implications of getting a full challenge, which can be substantial.

    My key piece of advice is to understand where your trademarks are competing and exactly how far you can progress an application without incurring legal costs. Once those kick in, it can get very expensive, very quickly. I was fortunate and received the trademark for the basic £170 fee, but the stress of not knowing when you might have to pay legal fees is well worth avoiding.

    Michael Thompson
    Michael ThompsonDirector, Bake & Bag

    Clear Proposed Marks Thoroughly

    Without a doubt, the number one thing anyone can do to navigate the trademark registration process in a cost-effective manner is to fully and properly clear the proposed mark with qualified trademark counsel. This process searches databases in the relevant jurisdictions to identify any potentially problematic prior-filed registrations or applications. But it also includes looking for potentially conflicting non-registered uses. Clearing should also include an analysis of the mark in question as well to determine if it is descriptive, or has some other defect, and isn't otherwise able to be immediately protectable.

    Too many people skimp on this vital process, only to stumble into a problem later on when it turns out the mark is in conflict with someone else's or is otherwise not capable of immediate trademark protection. This inevitably leads to much greater cost. Due diligence ahead of time, while perhaps more costly up front, will often save significant costs later.

    Vijay TokeHead of Litigation, Pranger Law P.C.

    Retain Experienced Local Counsel

    I recommend retaining experienced local counsel (registered Trademark Agent). Conducting a search of the register and marketplace and obtaining pre-filing advice can save time and reduce costs later. Using pre-approved goods and services approved by CIPO will avoid technical objections and expedite examination.

    Janice Bereskin
    Janice BereskinPartner, Bereskin & Parr LLP

    Conduct Thorough Trademark Searches

    One of the key pieces of advice for navigating the trademark registration process in a cost-effective manner is to ascertain the distinctiveness quotient of the proposed mark and conduct a thorough trademark search in the online records maintained by the Indian Trade Marks Registry before filing a trademark application. The trademark search is not mandatory; however, it is highly recommended. This exercise helps in identifying prior marks existing in the records that may pose hurdles at the examination stage and in the acceptance of the proposed mark.

    Investing time and money in trademark searches will not ensure that a proposed application safely sails through the examination stage without objections; however, it helps us identify prior marks and entities that can create obstacles and, accordingly, devise an optimal strategy to deal with those prior marks. This proactive approach ultimately saves on legal fees and mitigates unnecessary expenses.

    Gaurav PhadnisAssociate Partner, LexOrbis

    Finalize Mark Details Before Filing

    Don't start the registration process until you're reasonably certain how the mark will appear (its exact spelling and/or appearance), and where it will appear (on packaging, websites, signage, or wherever). If these details change, a registration application may need to be redone if not already filed, and may go sideways if already filed. It's very useful if trademark counsel can start with evidence of actual or intended use of the mark—that is, samples of actual packaging or advertising, or at least a detailed description of such matter. This evidence is typically required in order to obtain registration, and if used as the foundation for the registration strategy, costs and problems are typically reduced.

    Craig FieschkoAttorney (Patents, Trademarks, Copyrights), DeWitt LLP

    Select Strong, Distinctive Marks

    The decisions made during the selection and clearance stages of launching a brand are essential in helping to manage the costs of the trademark registration process. By selecting a strong mark, i.e., a non-descriptive or non-generic mark, and having a professional trademark clearance search conducted prior to filing a trademark application, brand owners may be able to reduce the chances of, and additional costs associated with, receiving refusals from the USPTO and/or challenges by third parties throughout the registration process.

    Kristin GrantManaging Partner, Grant Attorneys at Law PLLC

    Avoid Generic or Industry-Specific Words

    Steer clear of generic or industry-specific words while choosing a trademark. Rather, choose evocative, random, or whimsical symbols that clearly distinguish your brand from rivals. Consumers are more receptive to distinctive trademarks, and they also work better to discourage trademark infringement.

    Risk and uncertainty: Registering and safeguarding your intellectual property, including trademarks, can be risky and unpredictable since you run the risk of having your rights revoked or rejected by authorities or other parties. Concerning the authenticity, ownership, or violation of your rights, you could potentially run into disagreements, lawsuits, or arbitration. Cyberattacks, pirated goods, and counterfeit goods could also be problems for you and jeopardize the security and integrity of your brand.

    Steve Neher
    Steve NeherCEO, Mail KIng USA

    Utilize the USPTO's TESS Resource

    My golden rule for cost-effective trademarking? Do your homework before hitting the "submit" button. Here's what I mean:

    First, utilize the free resource offered by the United States Patent and Trademark Office (USPTO) – it's called the Trademark Electronic Search System, or TESS for short. You can search for existing trademarks there to see if something similar to yours is already out there. This can save you a ton of time and money down the line. Imagine filing an application, only to be rejected because your amazing business name is already trademarked by someone else – a real headache! TESS helps you avoid that by letting you see what else is out there in the trademark world.

    Now, a trademark attorney can be a lifesaver, especially if your situation is complex. But for straightforward trademarks, a thorough TESS search can definitely help you go the DIY route and keep those costs down. Just remember, a little prep work upfront can save you a lot of grief – and money – in the long run.

    Matt Little
    Matt LittleDirector & Entrepreneur, Festoon House