By Julie Zamler
Intellectual Property Attorney, Burris Law
A strong trademark strategy used to start with the question: “Is the mark available and registrable?” That question still matters, but it may no longer be enough. As brands launch across borders, platforms, languages, and media formats, the better question now is: “Will this mark work as a brand asset wherever and however the business plans to use it?” For lawyers, business teams, brand owners, and inventors, three important considerations should be made early in the trademark planning process:
- Choose the strongest mark before adoption and the best filing pathway before filing;
- Understand how AI tools are changing searching and filing mechanics; and
- Recognize that brand protection is expanding beyond words and logos.
Together, these developments point to a broader shift: trademark protection is no longer just a filing exercise. It is a business planning exercise.
Start Before Launch
For brand owners, inventors, startups, and established businesses, trademark strategy should begin before a name, logo, product design, campaign phrase, or brand identity is adopted. The strongest trademark portfolios are often built when legal, marketing, and business teams work together early to identify protectable assets, evaluate risk, and choose the right filing approach.
Once a business has selected a potential mark, the next strategic question is how and where to file. Filing strategy, local language, and local market conditions matter.
A mark that works in one market may be considered descriptive, generic, difficult to register, or problematic in another. Companies should consider translations, transliterations, pronunciation, cultural meaning: a term that functions well as a brand in the United States may carry a different meaning, sound, or legal risk elsewhere. Consumers in a particular country may understand or use the mark differently, as well.
For businesses with international ambitions, these issues should be part of the clearance and filing strategy from the beginning. For companies seeking protection in multiple countries, two common pathways are direct national filings and the Madrid Protocol.
Direct filing means filing an application in each individual jurisdiction. This approach gives applicants and counsel the ability to tailor the application to local practice, local language, local use, and country-specific requirements. That flexibility can be valuable when a mark is borderline, the goods or services are unusual, or the business plans to use the mark differently in different markets. The tradeoff is cost and coordination. Filing fees, foreign associate fees, translations, formal documents, and docketing obligations can add up quickly.
The Madrid Protocol is an international trademark filing system that allows eligible applicants to seek protection in multiple member countries through one centralized application, instead of filing separately in each jurisdiction. With 132 current members, the Madrid System of the World Intellectual Property Organization offers the advantage of centralization. It allows applicants to file one international application, in one language, with fees paid in one place.
For businesses with clear marks and relatively consistent goods or services, the Madrid System can reduce administrative burden and make renewals and later designations easier to manage.
But Madrid is not always the cheaper or safer path. An international application depends on a base application in the applicant’s office of origin for the first five years, and problems with that base application can jeopardize the international registration. Applicants may also need to appoint local counsel if a designated country issues a provisional refusal or if a local address of service is required in the jurisdiction.
Given the benefits and considerations of each pathway, applicants may find a hybrid approach most sensible: use the Madrid Protocol where the mark and identification fit cleanly with local practice across the desired jurisdictions, and file directly where customization, local evidence, or risk management justifies the added expense.
New AI Tools: Helpful, But Not a Substitute for Human Judgment
In 2026, the United States Patent and Trademark Office rolled out several trademark-related technology updates that may help practitioners and applicants during the search and filing process. New USPTO AI tools may improve parts of the trademark search and filing process, but they do not replace legal judgment. AI image searching, mark description assistance, and classification tools should be used thoughtfully and reviewed carefully.
One example is the USPTO’s image search feature, which allows users with a USPTO.gov account to upload an image or image URL to search for potentially similar design marks. This can be especially helpful for logos, stylized marks, and design-heavy branding, where word searches alone may miss important risk.
However, AI image searching should be treated as a supplemental tool, not a clearance opinion. Traditional searching still matters, including word searches, owner searches, class searches, goods and services searches, and design-code searches. AI tools may help surface relevant results, but they do not replace the analysis needed to evaluate likelihood of confusion, descriptiveness, strength of a mark, relatedness of goods and services, or other legal issues.
The USPTO has also introduced AI assistance for mark descriptions and color claims in the Trademark Center application form, which are useful for applications involving design marks or marks with color features, where unclear descriptions or mismatched color claims can delay examination. Applicants should still carefully review AI-generated language. The question is not whether the wording sounds polished. The question is whether the description accurately captures the mark as used and filed, complies with USPTO requirements, and supports the applicant’s broader trademark strategy.
Another development is the USPTO’s Class ACT initiative, which uses AI to assist with application pre-processing, including assigning international classifications and design search codes. USPTO personnel still review the AI assignments, but improved pre-processing may make the trademark database more searchable and help streamline review.
For applicants, these tools create opportunities but also reinforce the need for careful drafting. As classification and search systems become more structured, descriptions of goods and services, mark descriptions, and filing details may receive even greater scrutiny.
Beyond Words and Logos
Brand protection is expanding beyond traditional marks. In the right circumstances, scent, sound, voice, image, and other nontraditional marks may help businesses protect source-identifying brand assets.
For example, India’s acceptance of Sumitomo Rubber Industries’ rose-scented tire mark is a useful reminder that nontraditional marks are not just curiosities. To function as a trademark, a scent must identify source, not merely improve the product. That is why a rose scent for tires is more compelling than a pleasant scent for perfume: the former is arbitrary and nonfunctional, while the latter is likely part of the product itself.
In these cases, the evidentiary burden remains high. Applicants should be prepared to show a clear representation of the scent, non-functionality, consumer recognition, deliberate branding use, and marketing that teaches consumers to associate the sensory feature with one source.
The same principle applies to sound, voice, and image marks in the age of generative AI.
TMEP Section 1202.15 recognizes that sounds can function as marks when they create an association with a particular source. Recent celebrity filings involving voice clips and images show how trademark filings may supplement right-of-publicity claims and can prevent AI deepfakes and false endorsement. These tools are not a blanket right to control every imitation or reference. They work best when the sound, image, voice, or phrase is used consistently in commerce as a source identifier.
For brands, celebrities, founders, creators, and businesses whose identity is closely tied to a recognizable sound, phrase, image, or persona, these issues should be considered early as part of a broader IP protection strategy.
Practical Takeaways for Businesses and Brand Owners
Trademark protection is no longer limited to asking whether a name or logo can be registered.
For modern businesses, trademark strategy requires a broader view: where the brand will operate, how consumers will encounter it, what elements identify source, how technology may affect misuse, and which filing pathway best supports the company’s goals.
The practical lesson is simple: do not treat trademark filings as paperwork to complete after launch. Treat them as part of the brand-building process from the beginning.
The strongest portfolios are built when legal, marketing, and product teams identify protectable assets early, select the right filing pathways, use new tools thoughtfully, and keep human judgment at the center of brand protection.
About Julie Zamler: Julie Zamler is an intellectual property attorney at Burris Law. She focuses her practice on trademark and intellectual property matters, helping clients evaluate, protect, and manage brand assets as part of broader business and IP strategies. Before joining Burris Law, Julie was a patent legal assistant with a national IP firm and worked for a contract research organization in the biopharmaceutical field – giving her meaningful experience at many levels of intellectual property management.