By Purple Fox Legal
March 30, 2022
For small business owners and entrepreneurs, it can be difficult to navigate the confusing world of paperwork, legal requirements, and different registrations needed for their professional endeavors. This is especially true when it comes to filing a trademark, where making mistakes is incredibly easy and costly. The trademark registration process is quite complex and confusing, especially for those not familiar with it.
In this article, the top trademark registration mistakes will be discussed as well as how to avoid making them. This article will help you learn from others’ mistakes and stay vigilant before filing your own federal trademark registration application.
Obtaining a federal registration for a new trademark isn’t something that can just be done overnight. It is a process that requires research, preparation, and often, professional guidance. Here are five common trademark registration mistakes you should avoid making.
As mentioned above, research is one of the most important steps of the trademark registration process. Failing to do it properly could result in the accidental infringement of someone else’s existing trademark, which will only end in a world of trouble for you.
KEY TIP: Keep in mind that it is your responsibility as the business owner to conduct a thorough trademark clearance search to make sure you aren’t infringing others’ trademarks before filing the paperwork to formally establish your business entity with the secretary of state. It is not the responsibility of the applicable jurisdiction’s secretary of state to do this search for you.
To avoid a surprise rebranding or running into legal issues down the road, it’s imperative to make sure that no other entity is using your intended trademark.
Trademark law in the United States prevents the federal registration of words and phrases considered “generic”, and instead requires them to be descriptive or inherently distinctive. This rule prevents the development of a monopoly within a certain industry. Avoid using general, everyday terms in your trademark to increase its likelihood of approval.
A federal trademark application should never be submitted and then forgotten about, as this is one of the easiest ways for you to lose any hope of obtaining a registration. Once your initial application is submitted, it is your responsibility to watch for a reply from the United States Patent and Trademark Office (“USPTO”). The USPTO may request a response from you, especially if there is an issue with your application. Failure to respond in a timely manner could result in your application being labeled as “abandoned.”
The federal trademark application isn’t the easiest online form to complete in the world. And, because of this, the likelihood of errors is quite high, especially if you don’t know what you’re doing. Simple mistakes, like selecting the wrong class, will typically result in a request for further information from the USPTO (see Mistake 3 above). Other technical errors though, like filing your trademark under the wrong name, could result in outright denial of the application, which results in you throwing away money.
As mentioned in Mistake 3, registering a trademark application is not something to be submitted and then ignored. Even after a trademark registration has been approved, it’s the owner’s responsibility to use, maintain, protect, and renew it. Trademark monitoring is an extremely important part of the process, no matter how much time or effort it takes.
It’s no secret that the federal trademark registration process is lengthy, difficult, and complicated. For today’s business owner, it’s just another task added to their neverending to-do list. But it doesn’t have to be that way. With the help of an experienced attorney, the trademark registration process can be simple, easy, and totally free of mistakes.