Top 6 Trademark Mistakes

Trademarks allow businesses to communicate to customers where goods and services originate. Your business spends time, sweat, and money making the items you sell. Connecting the product to your company in the consumer's mind is vital to attracting and keeping business.

To obtain a trademark, there is an application process you must follow with the U.S. Patent and Trademark Office (“USPTO”). The process can be time-consuming, but you should ensure you follow all the steps. You can follow the process yourself, but for peace of mind, having an attorney familiar with intellectual property and trademark law may help you ensure your trademark registration is done correctly.

Here are six common trademark mistakes and misconceptions businesses have.

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 "canceled" or "abandoned." Trademark rights are created by use, and even if they have not registered, or have not adequately maintained their registration, others still may have rights to the trademark in question. You need to conduct a comprehensive trademark search and an internet search to see what is out there and stay current about the goods and services that may be similar to yours.
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. It may be easier to obtain and maintain your trademark if your product has distinctiveness in some way that gives you a specific brand identity that hasn’t been seen before.
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 slapping a "TM" (or the "poor man's trademark" symbol), won't gain you any protection from use of your mark outside your immediate area of operation. In the meantime, someone else can apply for federal protection of the same trademark and leave you fighting to protect your ability to continue using the mark.
4. Choosing a trademark that describes your product. The most common rejection from the U.S. Patent & Trademark Office is that a proposed trademark is "merely descriptive." This rejection is based on 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 than ones with generic terms.
5. Thinking that your trademark covers all goods and services. Trademark protection is divided into a classification of goods and services. Being a trademark owner 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 potential infringements between your use of the trademark and the other party's.
6. 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.

If you are interested in obtaining a trademark for your product or service make sure to familiarize yourself with the trademark registration process and do a thorough search to make sure another item hasn’t already taken your name. Your brand’s reputation is all that you have so make sure you follow all of the steps and get legal advice if you need it.

Related Resources

• The U.S. Patent and Trademark Office (FindLaw’s Learn About the Law)
• What Is a Trademark? (FindLaw’s Learn About the Law)
• Trademarks and Business Names (FindLaw’s Learn About the Law)