TACTICAL PLANNING FOR TRADEMARK REGISTRATION SUCCESS AND POSITIVE BRAND PERCEPTION

Registered trademark protection for brands is available to any business, whether a small business or a large multi-national company, providing the requirements for trademark registration are met.   Large companies generally have a marketing department for addressing brand development, i.e., developing a brand for new services/products for which registered trademark protection will be sought whether nationally or internationally.   They also have legal departments which oversee matters such as trademark registration whether through department attorneys or outside counsel.  Either way, the brand development process is not done in a vacuum and routinely involves the input of managers from various departments as part of the company’s strategic planning process for obtaining and managing its intellectual property assets.  Obtaining registered trademark protection for brands cements the brand owners’ legal right to both monetize the brand and enforce the rights granted by trademark registration in any jurisdiction which grants a registered trademark.

Startups and entrepreneurs typically do not have the luxury of internal marketing and legal departments.  Some will file their own trademark applications and others will hire an attorney to file and prosecute a new trademark application.[1]   As an attorney who routinely works with startups and entrepreneurs to legally protect their brands through registered trademarks, I encourage clients to engage in tactical planning early on as they create and develop their brands for trademark registration.   The purpose behind such tactical planning is twofold: 1) to maximize the chances of obtaining a registered trademark; 2) to encourage clients to think about their branding strategy over the long term.   

Our Approach in Assisting Trademark Registration Clients

To assist them with tactical planning, our prospective clients are provided with a questionnaire containing questions similar to those presented in the following list.  Several of the questions are directly related to registered trademark procurement considerations while other questions are intended to encourage clients to home in on their business objectives for the brand.  All questions will not necessarily be applicable to every client.  However, we have had many clients tell us that the questions helped them consider factors they had not really thought about before including whether their brand truly reflects the image they want to convey based on their business objectives.  In some cases, the appreciative client went back to the drawing board before spending money on trademark registration. 

1. How did you happen to select the proposed mark?   Are you satisfied that it reflects the impression you want to convey about your product or service?  Remember that, with very limited exceptions, the applied-for trademark as presented in the application cannot be altered once the application is filed.
2. Have you conducted a thorough knockout trademark search?  If yes, what was the date of the search?  If done by a professional, please provide a copy of the search results and/or summary.   Do the search results indicate a registration risk on likelihood of confusion grounds?  If yes, how willing are you to assume the risk of registration problems?  Are there any red flags of any possible infringement on existing brands?
3.  What are the proposed mark’s associated goods and/or services? 
4.  Are the goods and services now being offered in interstate commerce under the proposed mark?  
5. Do you have documentary proof as to when the mark was first used anywhere and when its associated goods/services became available for purchase in interstate commerce? If yes, please identify the documents showing the dates.  If not, what documentation is available to show that you or your company has a bona fide intent to use the mark in commerce?  Will you be able to provide such documentation before an intent-to-use application is filed?  Click here for a blog on what bona fide intent means under trademark law.   
6. If you answered “no” to question 4, when do you project the product(s) and/or services will be available for purchase?  
7. Will the mark only be used in the US or do you plan to sell goods/offer services in other jurisdictions?  Do you have the financial resources to seek such registrations through the Madrid protocol once the US application is filed, or will such protections perhaps be sought at a later date?  
8. If the mark will also be used internationally, do you have any concerns that the mark could encounter any negative connotation in other countries? 
9. What makes your mark unique or distinguishable from existing registered marks?  The best mark is an arbitrary mark or a coined word.  Merely descriptive and generic word marks will have registration problems.  Click here for a blog on such marks.
10.  Is the mark aligned with your organization’s long-term strategy?  Is the mark one that your organization will be keen on using over the long-term providing the mark is approved for registration?  Are you delighted with the proposed trademark?
11. If the mark is for a product, will the product’s packaging comprise a particular color or shape which you consider unique?  If yes, the packaging may be eligible for trade dress protection on the Principal Register if inherently distinctive or if it eventually acquires distinctiveness over the years.
12. Will you or your company be selling the trademark’s associated goods/services itself or will you be licensing any registered mark to, e.g., distributors or franchisees?  Note that detailed trademark licensing agreements will be required under the latter scenario to avoid loss of trademark rights.
13.  What is your long-term business strategy?  Where do you see the business one year from now and five years from now?
14. Is the proposed mark for any proprietary goods or services for which patent protection or a registered copyright are being sought?  Any associated trade secrets as in a product formulation or software code?  If yes to any of the foregoing, your IP assets will not be limited to a registered trademark presuming the latter is granted.  Consider obtaining other available IP protections.
15.  Will the goods associated with the proposed mark have any special labelling requirements imposed by the federal government, e.g., by the FDA?   Will the products/services need to be approved by a regulatory agency prior to any sale in interstate commerce? 
16. What will the financial impact if a registered trademark is not granted by the US or any other country where registered trademark protection will be sought?  Do you have a backup plan?

Conclusions

Remember that trademark law is focused on ensuring that a consumer who encounters the brand covered by the registered trademark can be assured that the goods/services being purchased are provided by the source having the legal right to provide the trademarks associated goods/services in commerce.    Successful trademark registration of the brand will provide the registrant with legal rights in preventing others from using confusedly similar marks.  Before spending money on trademark registration, consider if the brand for which you are seeking a registered trademark is one that you will be proud to sell products/provide services under.   If “yes,” honestly assess whether the brand stands a solid chance of registration in the US and other target jurisdictions.  Use the above questions as a guide in reaching your conclusion.

THANK YOU FOR YOUR INTEREST IN THIS BLOG.  AS USUAL, THE CONTENT IS FOR INFORMATIONAL PURPOSES ONLY AND IS NOT LEGAL ADVICE.

© 2025 by Troy & Schwartz, LLC

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[1] Note that all foreign applicants for US registered trademarks are required to utilize a US licensed attorney to prosecute the application.  Click here for a blog on obtaining US registered trademarks by foreign applicants.