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Top 6 Trademark Mistakes

By Caleb Groos | Last updated on

Trademarks allow businesses to communicate to customers where goods and services originate. Your business spent time, sweat and money to make what you sell. Connecting the product to your company in the consumer's mind is vital to attracting and keeping business. Here are 6 common misconceptions and mistakes businesses make regarding trademarks.

  1. Failing to properly search existing trademarks. Simply looking at what is already registered is not enough. Neither is disregarding owners whose registrations have been "cancelled" or "abandoned." Trademark rights are created by use, and even if they have not registered, or have not properly maintained their registration, others still may have rights to the trademark in question.
  2. Thinking that because you coined a phrase or name you own a trademark. You have no trademark rights until your mark is used in commerce. Use of a trademark gives you geographically limited common law trademark rights. Federal registration gives you nationwide rights. Both common law and federal trademark rights are subject to rights previously owned by others.
  3. Thinking that putting a "TM" next to your trademark is enough. Common law trademark rights can give geographically limited protection without federal registration, but slappig a "TM" (or the "poor man's trademark" symbol), however won't gain you any protection outside your immediate area of operation. In the mean time, someone else can apply for federal protection of the same trademark and leave you fighting to protect your ability to continue using the mark.
  1. Choosing a trademark that describes your product. The most common rejection from the US Patent & Trademark Office is that a proposed trademark is "merely descriptive." This rejection is based in the right of competitors to accurately refer to their own goods and services. Trademarks with fanciful phrases or words not normally connected to your product are much easier to register.
  2. Thinking that your trademark covers all goods and services. Trademark protection is divided into a classification of goods and services. Owning a trademark in one class does not necessarily mean you can enforce against someone using it in another class of goods. Such use would infringe your trademark only if the respective goods and services are related to each other in a way that would cause confusion between your use of the trademark and the other party's.
  3. Applying to register a trademark covering a laundry list of goods and services. Some react to number 5 above by simply listing all goods and services under the sun on their trademark application. Even within one class of goods, it's understandable to imagine how one would think "What might I use this trademark on?" That, however, is the wrong question. While you always want to get the widest protection you can, you must actually use the trademark on all goods and services listed, or your entire registration is subject to cancellation. In the application and renewal process, trademark applicants declare that they are, in fact, using the mark on all goods listed. Signing this when not true constitutes fraud on the Patent & Trademark Office.
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