In this post, I will cover some thoughts and details about securing a name or filing for a federal wordmark for a CPG or consumer product startup with the USPTO.
1. Come up with multiple names to choose from.
2. Search the USPTO database for your chosen names and any variations.
3. Use the main search engines (Google, Bing) with your chose names and variations thereof to see if anyone else might be using and established common law rights to it. Go at least 5 pages deep in each search, if not more. You want to be thorough.
4. Research the feasibility of obtaining an appropriate URL. This may be the most difficult stage in this process as someone may already own the name you want and the URL and you will need to go about the process of trying to purchase it from them. If you cannot purchase it or cannot afford the price, then you may want to find a different name to use.
5. If an appropriate URL is available for low-cost or is not taken, then you might want to secure it by purchasing. If it will require a more significant amount, then hold off and consult with a trademark attorney so that they can perform their own searches and give you an opinion of the viability of securing a wordmark for the name.
4. To prepare the paperwork, review the International Trademark/Servicemark Classes at USPTO to determine where your products/services would be filed. You want to secure as much broad protection as possible, so think strategically about where your company will be in the future with respect to its product/service offerings. If you do not seek wordmark protection under a certain class now and end up offering a product/service in the future for which someone else has staked a claim, then you may not be able to offer your product/service under your chosen wordmark. Additionally, filings give you nationwide protection. If you do not file, then your wordmark is only good for the geographic area in which you sell your products and services. If you try to sell elsewhere where someone else is already using your wordmark, the burden of proof that you were originally intending to use your wordmark in that local is on you. With a federal wordmark, you have greater protection.
5. If you are not yet offering a product/service, then you will file an application designated as intent to use (ITA), which tells the USPTO that you intend to use the name in the future, but want to secure it now. If you are offering the product/service now, then you can file a use-based application. A ITU filing means more paperwork filings later, so if you can, start offering your product/service now to secure a use-based filing and avoid additional expense later. However, if an ITU is the only way you can do it now, then file anyway to secure rights to your wordmark.
6. Your attorney may take the text from class descriptions already filed with the USPTO to help construct yours. Since those descriptions were awarded a wordmark, its logical to assume that if you follow the same format, your chances of getting a wordmark may be better.
7. If you are purchasing the rights to the name from someone else, then I would still consult with your attorney beforehand to determine if your purchasing those rights will actually grant you the ownership and protection you need.
Once awarded, you need to protect your marks by policing them, using them and making regular filings to maintain the marks:
- In policing them, you can use services that will search the USPTO monthly for new submissions and send any to you that might infringe on your mark. You can have your attorney receive and review them, but you will be paying for their time. In my opinion, it is best to just have the submissions sent to you and if you need to, you can review with your attorney on a case-by-case basis. Ask your attorney about which service to use. Also make sure you setup Google Alerts using your wordmark so that you can monitor the web for any improper use of your wordmark by someone else.
- For use, you simply use your marks as described in your USPTO applications. If you stop using them, then someone could use a competing mark and claim that you abandoned your mark through non-use.
- Filings to maintain are performed every 5 years.