Don’t Go It Alone: Common Mistakes When Filing a Trademark Application

It’s entrepreneurial season, and everyone is out on a mission to secure the bag (myself included)!

In this season, I’m sure you have come to learn the importance of having your brands trademarked. And some of you have probably been tempted to take your trademark filing into your own hands. However, doing so could be a costly mistake. Below are some common missteps that business owners take when attempting to file their own trademarks:

Failure to Conduct a Comprehensive Clearance Search

This step is extremely important as it will save you a lot of time, money and a migraine. Searching the USPTO database for registered trademarks is not enough. There is something called a common law trademark that the USPTO does not track. Although, these types of trademarks are not registered, their use in commerce affords them trademark protection and the owners could challenge the registration of your mark.

Imagine falling in love with a name for your brand and spending time and money building your bran around that name. You decide you want to trademark your brand, so you proceed to file an application with the USPTO. Approximately three months later, you receive a communication from the USPTO examiner and you’re super excited to see what the next steps are… only to find out that it is an office action rejecting your mark for likelihood of confusion.

Or, in the alternative, your mark gets registered! You’re happy because now you’re good to go! But… someone with a common law trademark gets a whiff of this, and now there are petitioning to the USPTO to cancel your registration because they have a priority claim.

How stressful would it be to invest your time, money and energy into a mark that you absolutely love only to have it potentially snatched away from you? A comprehensive clearance search can at least lessen the blow in case a change in your mark is necessary. Your feelings might be hurt temporarily, but you will save time, money and energy because you would have prior notice of potential problems.

Failure to Properly Classify the Application

There are two ways to file your trademark application: Use in Commerce and Intent to Use.

It is important to know the difference between the two. If you use the wrong classification, the application will be void and you will have to submit a new application with an additional application fee in order to correct it. To file a Use in Commerce application, the mark must be used in commerce at the time of the application. A single sale to your sister will not be sufficient to prove use in commerce.

If you have not used the mark in commerce but intend to do so, an Intent to Use application would be appropriate. This application affords you some time to set things in place to use the mark.

It takes approximately three months for a trademark application to be assigned to an examining attorney. Thus, it may take even longer, after thorough evaluation, for the examining attorney to determine and communicate to you that you have submitted an absolutely void application. Meanwhile, this leaves the door open for another to submit an application that satisfies all requirements for registration, putting you at risk of losing your trademark rights.

Faulty Specimens

When filing a Use in Commerce trademark application, you must include a drawing of the mark and specimens that display the mark being used in commerce. The drawing of the mark defines what is being protected. If the mark in the specimens do not properly match the drawing, the specimens will be rejected by the USPTO, thus delaying the registration of your mark.

Improper Description of Goods/Services

The USPTO offers a list of pre-approved descriptions of goods and services. You would want to make sure that the description accurately describes your goods/ services. An improper description will void the application. This will likely present a problem with the specimens as well. Upon review by the USPTO examiner, the mark would be rejected. If you desire to correct the matter, you will have to start over with another application and an additional application fee. Not to mention, you’ve just potentially added an extra six months of your brand being exposed to the efforts of your opponents.

Improper Identification of the Trademark Owner

A mistake in ownership will also void your entire application. If the mark was created for a business and it is improperly assigned to an individual, this will present a problem with ownership if your mark is challenged by another party.

On the other hand, if a business is listed as the owner and that business has not been legally formed at the time of the application, it can be argued that the mark was assigned to a non-existent party, thus making any trademark protection claims void.

Now, these are just a few ways that you can create your own trademark demise. Trust me, there’s more!

BUT… by reading this blog post, you’ve made the first step in ensuring that you don’t make these regretful mistakes!

These mistakes can be avoided when you choose to hire an attorney. New Millennia Legal Resources offers a trademark package that takes care of the trademarking process for you. Our package includes a comprehensive clearance search with a detailed report and explanation, trademark registration, a timely procedural response to an issued office action, one full year of trademark monitoring with weekly updates, and one-month FREE access to our New Millennia Legal Resources membership. We help to mitigate the chances of the above-mentioned pitfalls and work to ensure your trademarking process is as smooth as possible.

The journey of entrepreneurship isn’t easy. At New Millennia Legal Resources, it is our primary mission to make sure that you are fully protected along this journey. Don’t go it alone! That’s what we’re here for.

Eloise M. Kaiser, J.D.

Eloise Kaiser joined New Millennia Legal Resources mid-year 2019 as the Senior Client Liaison. She is a New Orleans native and graduate of Loyola University New Orleans College of Law. As a natural creative in her own right, she holds a special interest in business and intellectual property law.

Eloise M. Kaiser, J.D.

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