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Are there any particular actions we can take to increase the chances of a successful trademark registration?

Founder & Trademark Attorney

The three most effective actions before filing are: conducting a trademark search, assessing the mark's distinctiveness, and selecting the correct goods and services classes.

A trademark search identifies existing marks that could form the basis of an examiner's refusal or a third-party opposition. Identifying these before filing allows you to adjust the mark or narrow the classes to avoid the conflict.

Assessing distinctiveness helps identify whether the mark is likely to face a descriptiveness objection. If it is, adjusting the mark before filing or registering a figurative mark alongside or instead of a wordmark is more effective than trying to overcome a refusal after the fact.

Selecting the correct classes ensures the registration actually covers the business activities it needs to, while avoiding unnecessary classes that increase cost and opposition risk.

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