Many inexperienced attorneys and business owners who attempt to register trademarks on their own make common — but potentially disastrous — trademark application mistakes.
These errors can delay the USPTO’s review of your application or worse: render the application void, forcing you to restart the whole process from the beginning without refunding your filing fees.
Whether you retain counsel to prepare your trademark application or go it alone, be sure to avoid these common damaging errors.
Common Trademark Application Mistakes: #1 Less is more.
Many applicants make the mistake of filing for protection of only the most detailed version of their trademark — i.e., full color logo with business name and slogan — in all of its glory. I suspect they do so believing that the “everything but the kitchen sink” approach somehow squeezes more value out of their $325/class filing fee. And, hell, if I can only afford to file one mark, why not include everything, right? Wrong. What these applicants do not understand may seem counterintuitive at first glance:
Protecting only the most decorated version of your trademark dramatically limits the breadth of your registration.
In other words, registering a trademark with all of these bells and whistles means your ability to enforce your rights in the various constituent elements of this trademark against infringers may be substantially weakened. This is due to the very narrow piece of intellectual property actually registered — that’s right, the more detailed the mark, the narrower and less valuable your trademark typically becomes.
To illustrate, if your name (in logo form) and slogan are registered as one trademark, than an infringement of that trademark may require proving a competitor used a confusingly similar name AND logo AND slogan. That’s a high burden of proof.
Consider this hypothetical: if the infringing competitor used a similar name and slogan but a wildly different logo, would you be able to prove the existence of a confusingly similar commercial impression? Maybe. Some consumers may identify primarily with your logo and pay little attention to your slogan.
On the other hand, if your trademark consisted of only your brand name in plain words with no particular claim to font or color. This would result in a broad piece of intellectual property. If the alleged infringing competitor used a confusingly similar name and slogan but a wildly different logo, would you be in a better position to show a confusingly similar commercial impression that in the previous hypothetical? Absolutely. Generally speaking, it’s best to leave the fancy graphics aside and protect the simple core of your brand: its name.
Common Trademark Application Mistakes: #2 Be accurate and honest.
This should sound obvious — after all, who would sign an application under penalty of imprisonment or fine if it contained inaccuracies? The answer would surprise you.
Many trademark disputes have uncovered outright fraud in the litigant’s application and this issue isn’t limited to unsophisticated applicants. Large corporations and small businesses alike have had their trademarks invalidated for this very reason.
Many applicants succumb to the temptation to exaggerate when it comes to listing their products in the description of goods section of their application. Perhaps you could chalk it up to the wild imagination of an optimistic entrepreneur.
Trademark applications call for a description of how the mark is or will be used in commerce. Commonly, this involves listing the product line that relates to the applied-for mark. Rather than listing the actual products being sold or those which the business has a bona fide intent to sell, applicants often list every potential product or service they can think of. Why? Perhaps this is another example of thinking they are getting more for their money. However, the applicant could be doing themselves a real disservice.
In the event trademark infringement litigation ensues, one of the first points of attack attorneys on both sides commonly consider is the validity of the trademark registrations at issue. I can tell you first hand, attorneys will meticulously review each piece of data represented in the trademark registration and related documents with the hope of discovering a weakness. This common mistake of listing potential products without evidence of actual commercial use, can be a major issue.
Not only may it in some cases be considered fraud on the Trademark Office, among other things, but it could lead to rendering your entire trademark registration void. Furthermore, if the trademark is not being used in connection with each and every good and service claimed by the owner, that registration will remain forever vulnerable to invalidation.
On the other hand, do not leave out products or services that you use in commerce or have a legitimate intent to use. You can never expand the listing beyond the scope of what has been presented in the original filing. The addition of goods and/or services would require a new filing.
The best practice is to be accurate and honest in including only goods and/or services for which the applicant truly has an intention to use in connection with the mark if it is a 1b application or actual evidence of commercial use if it is a 1a application.
If you are the person signing the trademark application, take the time to confirm the use of each and every one of the goods or services listed in the application. Collect images or other evidence of actual use of the applied-for mark in commerce in connection with every single product and/or service listed in the application. Guard these important records closely as the survival of your trademark may depend on them.
Unfortunately, this is just the beginning…
These represent only a couple of the common trademark application mistakes applicants frequently make. If you or someone you know would benefit from more information about trademarks and other legal tips for creative entrepreneurs, subscribe below for free updates.
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Trademark is a complex area of the law that is commonly misunderstood and vastly underutilized by many entrepreneurs. For more information, I encourage you to read my other articles:
- Trademark Registration – Is Your Brand At Risk?
- Supercharge Your SEO with Trademarks
- Business Name Ideas – Read This Before Naming Your Company
*Ian Gibson, Esq. is an attorney licensed to practice in the state of California. This article is for informational purposes only and is not intended to constitute legal advice. Visiting iangibson.com does not create an attorney-client relationship. This material may be considered advertising under applicable state laws. Copyright 2013 Ian Gibson.