Trademark strategy built around how your business goes to market

Two businesses can propose the exact same name and face very different trademark questions. A word mark used only on a product label raises different specimen issues than a logo used on a storefront sign. A name used to sell a physical product raises different questions than the same name used to sell a subscription, a course, or a franchise territory. None of this changes the underlying law, likelihood of confusion, descriptiveness, and proper specimens are evaluated the same way by every USPTO examining attorney, but it does change which issues are most likely to come up in your particular application, and which facts John needs from you to address them. If you are still choosing a name, start with a clearance assessment; if the name is settled, see how the registration process runs.

Several factors tend to drive the filing strategy and the risk profile of a given matter, including whether the business:

• Sells a physical product, a service, or some combination of the two
• Sells through a marketplace such as Amazon, through a direct-to-consumer storefront, or both
• Delivers value through downloadable software, a hosted platform, or an in-person service
• Uses the name as the title of a single creative or informational work, such as a podcast or a book
• Applies the name to packaging that will need to serve as USPTO specimen evidence
• Plans near-term geographic or category expansion beyond the current use
• Licenses the name to others, or is itself operating under license from a franchisor or licensor
• Operates a franchise system, or is considering franchising an existing brand
• Sells multiple product lines or sub-brands under one master name

None of these factors changes what the law requires. What they do is change the practical questions John asks during a clearance search, the way he drafts a goods-and-services description, and the specimen evidence he will ask you to gather before filing. The pages below describe how that context plays out across six categories of clients the firm regularly works with, but the underlying legal analysis, reviewing conflicts, drafting an accurate identification, and preparing a defensible application, is the same discipline applied to every matter, regardless of industry.