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How to Avoid Common Costly Mistakes Trademarking your Brand

Posted by Dragan Dan Ivetić | Jul 15, 2023 | 0 Comments

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Don't let a mistake cost you your trademark!

 Mistakes with Trademark Registration can be costly.

A trademark is a valuable asset for your small to medium business, no matter what that business does. Unless you know exactly what you are doing, it can be risky to try and register a Federal trademark in a "do it yourself" manner. Your Brand is important to you. That is why it is recommended that you use a trademark attorney instead of struggling to "do it yourself."

Online platforms will offer to file your trademark for unbelievably low prices. The hidden truth is that they are so cheap because they know they are limited in what they can provide. The USPTO only lets licensed lawyers represent trademark applicants. Thus the online portals with the unbelievable rate ONLY submit your paperwork. They do not check if it is sufficient, and they cannot help you beyond the filing except to let you know about mailings from the USPTO. Here are some of the most common errors people make. Avoid common trademark registration mistakes to ensure your planned mark has the best chance of attaining registration.

MISTAKE #1 - Your Chosen Mark is not Eligible for Trademark Protection

You need to know what can be trademarked and what cannot be trademarked. Here is a listing of some examples of things that people try to trademark, only to find out that it is not possible.

- Generic words and phrases

- Family Surnames

- Merely descriptive words/phrases

- Geographically descriptive phrases

- Titles of a single book

In order for your proposed trademark to be eligible, it must be unique in nature. The following are examples of some of the things that are eligible if they are unique.

- Brand Names

- Logos

- Slogans or Mottos

- Sound or color

- Fictional characters

- A series of books

MISTAKE #2 - Your Chosen Mark is Eligible but has Already Been taken or is Likely to be Confused with an Existing Mark

With trademarks - whoever uses and then registers the Mark first has priority of use over others who try to trademark their mark later. With over 7 million registered Federal trademarks, many potentially similar marks are already registered, so how do you know? The only way to be sure is to do a search before you file your application. There are 2 types of searches that can be performed by a lawyer. The first is a preliminary or "knock out" search that will focus on the USPTO's online search engine to identify any exact matches. This is the type of "search" that most online lawyers who offer "cheap" fees will utilize. Such a search consists of about an hour or 2 of work to review the USPTO database and prepare an opinion. No searches are performed of State or common law trademarks. No similar marks are looked for, only exact matches. As the name implies, this is a first step. Assuming there are no exact matches - then a second search should be performed - a "full" or "comprehensive" search. This entails ordering a 3rd party vendor's search of USPTO, State, Common Law, and domain names. That vendor's search data is sent to the lawyer and analyzed to prepare an opinion letter on any risks found and the trademark prospects of your chosen mark. There are several vendors out there - and the costs range from $230-$750 for these vendors. Attorneys will charge a flat fee for their work doing a knockout and analysis/opinion. When you consider the value of finding out if any risks of failure exist BEFORE you spend the money and time to prepare and file a trademark application (averaging 12-13 months process time at present), the search is not "too expensive" to consider.

MISTAKE #3 - Trying to Trademark Something you are not using in Commerce

The USPTO will only approve a trademark if you are USING the mark in commerce or intend to do so. All too often, people want to trademark and protect something that they are not using in commerce and don't intend to use (they just want to protect a "cool" idea). Trademarks do not arise from you thinking up something cool. Trademarks are not copyrights, and they come into existence with use in commerce. While it is ok to file an application based on an intent to use a trademark in commerce, be prepared to provide proof of use at some time subsequent to the application. Specifically, you will need to file proof that you are using the trademark in commerce within 6 months' time. That can be extended, but not indefinitely.

MISTAKE #4 - Using an Improper Specimen

Along with the application (unless you are filing on an "intent to use" basis), you will need to provide a specimen of the trademark in use. All too often, people will use a mock-up of business cards, or letterhead, etc. The USPTO will not accept these. You must have a specimen that is actually in use of physical. Not an artists or computer rendition/preview of what you may (or may not) print and use.

MISTAKE #5 - Failing to Respond to a USPTO Office Action from an Examining Attorney

An opinion letter is a preliminary indication of a reason for the rejection of your application that the examining attorney at the USPTO is raising. You are given a very short time period (3 months) to file a response to this letter or your application. If you fail to file any response, your application is "abandoned" (which means it has failed).

Again - having an attorney do the application for you and represent you before the USPTO can help to limit or eliminate these and other errors. Our office provides free initial consultations for clients looking to trademark their brand.

Contact us to discuss your trademark!

About the Author

Dragan Dan Ivetić

DRAGAN DAN IVETIĆ was born and raised in the Chicago suburbs, and wanted to become an attorney to help people from a young age.  He received a bachelor's d...


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