Trademark Resources

Useful Links

• Basic Facts About Trademarks – View the basic information about trademarks.
• USPTO's Trademark Electronic Application System (TEAS) – Submit your trademark application online directly to USPTO.
• USPTO's Trademark Electronic Search System (TESS) – Search the database for existing trademarks.
• International Trademark Association – Find out the latest news in the trademark community.
• International Trademark Classes and Services – Summary of goods and services classified into International classes.
• ICANN – Internet Corporation for Assigned Names and Numbers.
• U.S. Code Collection – Summary of Commerce and Trade Laws.

10 Steps to Registering a Trademark

1. Have a list of several name options to select from
2. Perform a preliminary trademark search to determine mark availability (Timeline of entire process)
3. Determine the level of risk you are willing to take in the likelihood of a challenge
4. Have your attorney do a deep dive search on the final name candidates using your level of risk (note: if you have a high tolerance for risk, skip the attorney part)
5. Fill out the USPTO application form
6. Select your registration class (for U.S. Federal marks)
7. Submit your fee
8. Submit a specimen of use or an intent to use drawing mark (even if only the word will be used)
9. Follow up
10. Most marks are approved in about 4 months

9 Types of Trademarks

1. Word
2. Alphanumeric Marks
3. Domain Names
4. Color Marks
5. Fragrance Marks
6. Sound Marks
7. Ingredient Brand Marks
8. Design / Logo Marks
9. Trade Dress

8 Ways to Pass the Confusion Infringement Test

1. Demonstrate good faith in adopting the mark
2. Establish that goods or services are not sold to the same consumer
3. Show that the goods or services aren't sold “side-by-side”
4. Establish that the goods or services are not sold in the same store or catalog
5. Demonstrate that you will not advertise your mark in the same proximity
6. Create a distinctive spelling, sound or fragrance to differentiate the mark
7. Establish that the level of sophistication of the buyers are inherently different
8. Use market research to prove there is not likelihood of confusion

7 Ways to Determine if a Mark Is Too Famous to Fool With

1. The degree of distinctiveness of the mark
2. The duration and extent of use of the mark
3. The duration and extent of advertising and publicity of the mark
4. The geographical extent of the trading area in which the mark is used
5. The channels of trade for the goods or services with which to mark is used
6. The degree of recognition of the mark in the trading areas and channels of trade used by the mark's owner and the person against whom the injunction is sought
7. Whether the trademark is registered

6 Places to Search for Existing Trademarks

1. U.S. Common law
2. U.S. State
3. U.S. Federal
4. International
5. WIPO
6. By Individual Country

5 Types of Marks You Cannot Register

1. A living person's name
2. Marks that are likely to cause confusion with currently registered marks
3. Marks that are deceptively misdescriptive
4. Marks that appear to create a false sponsorship
5. Marks that are merely descriptive or geographic

4 Ways to Protect a Descriptive Mark

1. Be the first to continually use it
2. Use it everywhere
3. Spend a lot of money on advertising
4. Spend a lot of time defending it

3 Ways to Create a Distinctive Mark

1. Make it arbitrary (Apple)
2. Coin it (Verizon)
3. Create a suggestion or metaphor (Greyhound)

2 Ways to Invalidate an Incontestable Trademark

1. The registration may be cancelled if it or the incontestable right was obtained fraudulently
2. The registration may be cancelled if the mark has been abandoned by the registrant

1 Way to Define a Trademark

1. A trademark is a word, name, symbol, device, or any combination thereof, which is used to distinguish the goods of one person from the goods manufactured or sold by others, and to indicate the source of the goods, even if the source is unknown.