The process of registering a trademark must begin with an assessment of the proposed mark

The process of registering a trademark must begin with an assessment of the proposed mark, itself, and the mark in relation to the goods or services that are intended to be protected by the registration.

A trademark may be eligible for registration, or registrable, if it is distinctive. Distinctiveness is the ability of a mark to identify a good or service, and to distinguish it from other similar goods or services. At this step of the process, the trademark lawyer should evaluate if the mark has intrinsic or inherent distinctiveness. That is, if it is capable of acting as a mark in relation to other marks in the marketplace. For example, a mark consisting of a single-digit number, an isolated single color or a simple geometric figure is considered to be devoid of distinctiveness, and it is not eligible for registration. In addition, words that are used to designate the goods or services, or words that describe or qualify the goods or services are not registrable.

Once the trademark attorney has determined that the mark itself is eligible for registration, the next step should be to conduct a trademark search. Although a search is optional, its practice is highly recommended. Through the search it is possible to become aware of previous trademark registrations or applications able to interfere with the intended application. With the help of the search report, the trademark lawyer can determine whether the mark has extrinsic distinctiveness (ability to act as a mark in relation to other marks in the marketplace), and to give an opinion on whether the mark is available, or whether it may face obstacles due to previous registrations or applications. The trademark attorney will assess if such obstacles are easy to overcome, or otherwise will advise the selection of another mark.