Learn why instant pre-qualification for a business trademark prior to legal registration can avoid the dreaded Trademark Trap
By Product Dragon—Nonprofit helping ethical innovators
T here’s a common “trademark trap” that ensnares far too many small business owners, and I can say (from costly personal experience) it works like this:
Searching for “how to trademark a business name” typically returns trademark search engines and “how-to” guides with the typical process steps. This leads people to think registering a trademark is like buying a domain name: if it’s available, you can register and use it.
That’s simply not true. But by the time applicants realize it, they’re too invested in the process to stop.
Contrary to popular belief, it is not sufficient that your proposed trademark is simply “available.” Furthermore, a trademark might not even be the appropriate legal tool to protect your brand.
So, while it’s easy to learn the basic steps of trademark registration, it’s much harder to know if you qualify in the first place. A large part of a US trademark attorney’s job (and cost) is determining the eligibility and strength of applications.
If you attempt to register a weak trademark on your own, you run the risk of your application being rejected or delayed due to legal issues too complex for you to handle.
Important: Check if you even qualify for a U.S. trademark
Trademark qualification score
A good first step to protecting your brand name is to assess your eligibility before using any registration service. The free Trademark Application Qualification System (TAQS) is a fast way to gain clarity on your approval likelihood, cost and timelines, and application suggestions. After answering several multiple-choice questions, a score and report are generated for you.
A score above 80% suggests your prospects are generally good for securing and maintaining a strong U.S. registered trademark, and the trademark is suitable for your business goals.
While this is a free non-legal assessment, checking your trademark score in advance of application may mitigate rejection risk. Your report can indicate application weaknesses and provide improvement suggestions to strengthen your filing with a qualified attorney.
Risks of trademark rejection
Over 60 percent of US trademark applications are rejected, so the risk is worth considering. A major cause of rejection is when a brand (or the specific usage of a brand) was not eligible for trademark protection to begin with. Rejection can happen for several other reasons, and you would typically lose your application and attorney fees.
A rushed application can also result in a weak trademark filing. This raises the possibility of a formal objection by another party holding a similar brand mark. The objection can block your application, or create an expensive legal conflict years later.
The best ways to apply for a U.S. trademark
If you’re willing to learn the process and accept the risks, then self-filing (if you are a U.S. citizen) is an option. Please be aware there is a significant chance of making a technical or strategic application error on your initial or supplementary filings if you are not experienced.
You may also consider online filing services, which are inexpensive ($400 to $1000 plus government fees), but may not conduct eligibility checks, and typically charge extra fees if additional actions are required.
If your trademark is important to you then a sensible approach is first conducting a quick pre-qualification assessment, and then having a trademark attorney manage your filing, or seeking the help of an experienced paralegal. An attorney can reply to requests by the USPTO examiners (called “office actions”), and guide you through any objections or complications that may arise.
Reduced cost filing option
Entrepreneurs and small business owners often prefer a lower-cost filing option and are willing to be somewhat more “hands-on” with their application.
It’s possible for US citizens to self-file for a US trademark with the help of an experienced trademark paralegal, rather than hiring an attorney to manage the process. This provides a detailed trademark search performed by an expert, which is essential for deciding whether to proceed with filing and if any adjustments may be necessary to avoid rejection.
Keep in mind that any filing method has a minimum cost of $250 due to government filing fees, and that government fees could be in the $1000 range for broad-ranging marks spanning multiple classes.
DirectFile is one reduced-cost (assisted self-filing) program that also provides a refund guarantee. Low-cost registration services have proliferated in the past decade, so check what they include carefully. The cheapest options typically do not including expert search, consultation, or filing support.
How long does TM application take?
The initial examination wait time (“first action”) is currently around 8.5 months, and the entire process takes about 14.6 months if there are no significant complications (source: USPTO). Approval delays are more common when applicants have not adequately prepared documentation of their brand usage and related documentation.
Helping innovators solve the world’s problems.
Product Dragon is a nonprofit with the mission of helping ethical product innovators benefit society by providing inspiration, education, expert support, and funding assistance.