11 Common Mistakes When Applying for a Trademark in US
11 Common Mistakes When Applying for a Trademark in US
Trademark helps to distinguish your brand from the competitors. But, if the trademark is not properly registered with the government, it can be exploited or infringed. Others can use your brand reputation for their own benefit. In the US, business owners need to register their trademarks with USPTO. The common mistakes when applying for a trademark in the US are identifying the incorrect goods and services, choosing the descriptive or generic trademark, etc. This article explores the 11 common mistakes one could make during the US trademark registration.
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Below, you can find the 11 common mistakes one could make when applying for a trademark in US.
1. Identified the Wrong Party as the Trademark Owner
Ensuring accurate ownership information is crucial when filing a US trademark application. The application requires specifying the legal name and legal entity type of the trademark owner. This could be an individual, a sole proprietor, a corporation, a partnership, an LLC, or another recognized legal entity. While someone else can complete the application itself, the legal owner must be correctly identified from the outset.
Imagine you co-own a bakery with a friend. You decide to register a trademark for your bakery’s unique logo. If you mistakenly file the application solely under your name, it will likely be rejected. The trademark reflects ownership by both you and your partner. Unfortunately, simply adding your partner’s name later or attempting to assign ownership jointly won’t rectify the mistake. In this scenario, the only option is to start fresh with a new application accurately identifying both of you as co-owners of the trademark.
2. Identified Incorrect Goods and Services for your mark
When applying for a trademark, you must precisely identify the goods and services your’e using or intend to usa for your mark. Ensure to selecting the goods & services you’re providing under the trademark, instead of how you’re using the trademark. You can’t broaden the scope of your application later, so ensure the listed goods or services accurately reflect your current and potential offerings. While you have the flexibility to narrow down your initial list (e.g., from a broader category like “clothing” to specific types like “t-shirts and polo shirts”), adding entirely new categories not included from the beginning is not possible.
3. Lack of Trademark Search
There’s a chance your trademark might be too similar to an already registered one, causing confusion among consumers. This can happen if the trademarks resemble each other in sight, sound, or meaning, even for related products or services. Trademarks don’t have to be identical to be designated as confusingly similar since it could share same visuals, sounds, or even goods and services . To avoid this, utilize the USPTO Trademark search to figure out the conflicting marks. This is one of the commonly made mistakes in US trademark registration.
4. Chosen the Generic Trademark
Trademark protection exists to safeguard unique identifiers for your brand. But if your chosen trademark is simply the generic term for your product or service, it wouldn’t qualify. Imagine trying to trademark “Bakery” for your bakery, “Coffee Shop” for your cafe, or “Legal Services” for your law firm. These terms are common, everyday descriptions that any competitor could rightfully use to describe their own offerings.
5. Selected the Commonly used phrase
Phrases or slogans that are common in everyday conversation and express general ideas or feelings are unlikely to qualify for this protection. Imagine trying to trademark “get well soon” for greeting cards. This phrase doesn’t inherently point to your specific company as the source, it simply conveys a well-known sentiment. Trademarks need to be distinctive and separate themselves from the general flow of language.
Also Read: What can and cannot be trademarked in US?
6. Chosen the descriptive Trademark
USPTO won’t register names that simply describe what your product or service does. For example using the ‘Hot’ for Coffee or ‘Cold’ for Icecream. These terms are all too common and don’t help distinguish your brand from competitors. This type of marks cannot be registered in the Principal Register as it requires the acquired distinctiveness to your trademark. It might be registered in the Supplemental Register, but it offers weaker legal protection.
7. Identified the wrong trademark class
When filing a trademark application, ensure you identify the right class for your trademark. There are 45 trademark classes, select the appropriate one since you’ll get the legal protection for the usage of trademark associated with goods and services given in the specified class. Be proactive, it is better to including the classes that be might be related to goods and services you’re offering in future. Most people find this mistake common in US trademark registration.
8. Having Another Person’s Name in your mark without their consent
Trademark registration can be denied if it includes identifying features of a living person without their permission. This applies to names, portraits, and even signatures. To register such a trademark, you’ll need written consent from the individual in question. Imagine you want a logo featuring a cartoon chef, but it bears a resemblance to a famous celebrity chef. In this case, you’d need the celebrity chef’s written consent to proceed. The same goes for using your company founder’s signature as a trademark – you’d need their written consent before registration.
9. Used the Surnames Only
Trademarking a surname alone is difficult because it lacks inherent distinctiveness. Many individuals share the same surname, and it wouldn’t inherently indicate a specific source of goods or services. Imagine a business named “Miller Electronics” owned by someone with the last name Miller. Here, “Miller” simply identifies the owner, not necessarily the brand. However, a surname can be trademarked if it acquires “secondary meaning,” where consumers associate the name with a particular brand rather than just a family name. For instance, “Ford” on a car signifies the Ford Motor Company, not just someone with the surname Ford.
10. Chosen the Wrong Specimen type
The submitted specimen must accurately depict the way the trademark is used in commerce in connection with the goods, sales or advertising. For example, the specimen might be mocked or digitally created rather than how actually it is in real-time. The application can also be rejected if the specimen doesn’t represent the trademark function. For example, the specimen of the applied trademark only identifies the title of a single work.
11. Using TM symbol
The “TM” (™ ) is referred to as a ‘poor man’s’ or ‘common law’ trademark. It is applicable only within the geographic boundaries your company functions. Legal enforcement becomes difficult if some infringes on your trademark. For stronger legal protection and nationwide coverage, registering your trademark with the United States Patent and Trademark Office (USPTO) is essential. If the company filed and received the grant from USPTO, then the ® symbol can be used.
These are the 11 common mistakes one could make when applying for a trademark in the US.
Learn more: Do you need an attorney for US trademark registration?
Conclusion
Avoiding these 11 common mistakes when applying for a trademark in the US will significantly increase your chances of successfully registering your trademark with the USPTO. Remember, a strong trademark safeguards your brand identity and provides legal recourse against infringement. By carefully considering these points throughout the US trademark application process, you can ensure your brand receives the legal protection it deserves.
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