5 Trademark Mistakes You Can Learn From

5 Trademark Mistakes You Can Learn From

by Michelle Fabio, Esq., August 2017

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If you have a business, you've undoubtedly spent a lot of time thinking about your brand. You should do all you can to protect certain aspects of the intellectual property you've created—your logo, name, and tagline, to name a few—under trademark law.

Registering a trademark helps the public identify your product or service as coming from your business and also puts other businesses on notice that your brand is yours and yours alone. Although you may already have some common law rights because of the use of your brand in commerce, going through the process of trademark registration with the United States Patent and Trademark Office (USPTO) gives you the all-important right to sue infringers in federal court and potential access to additional damages.

Registering a trademark requires investments of both time and money, so you'll want to avoid some of the most common mistakes—and you can learn from others who have already made them.

1. Infringing on Someone Else's Trademark

One of the first steps in registering a trademark is to search for whether yours would infringe on the rights of anyone else's. You can spare yourself a lot of problems later by doing a comprehensive search of existing trademarks. A good place to start is the trademark filing database, Trademark Electronic Search System (TESS), for exact or similar trademarks that have been registered or applied for.

If you move forward despite some potential conflicts, a lawsuit may be in your future. New York's Coffee Culture Cafe recently landed itself in hot water with Starbucks over its drink called the “Freddoccino." Starbucks claims the name is too close to one of its own drinks, “diluting the distinctive quality of Starbucks' famous Frappuccino® mark" and potentially causing confusion among consumers.

2. Trying to Trademark Generic Words

The strongest trademarks are “inherently distinctive," which makes them easiest to register with the USPTO and to defend in case of infringement. Related to this, note that even if you have invented a word to serve as your brand's name, it still needs to be registered as a trademark in order to have the fullest protection under the law.

Trying to register a trademark using generic words will often result in a denial from the USPTO. Hotels.com, for instance, could not register its name as a trademark because “hotels" was ruled to be too generic even with dot com added.

Another "generic" concern is that some trademarks end up being so popular that they become “genericized" and lose protection when the trademark becomes synonymous with the general type of goods. Famous examples of these include aspirin, escalator, rollerblade, and thermos.

3. Assuming You Can Register Your Name as Your Brand

Just because it's your name doesn't mean you automatically own it under trademark law. Kylie Jenner's recent trademark battle illustrates how difficult it can be to receive protection of a mark that includes one's name.

In 2015, Kylie Jenner submitted an application to register “Kylie Jenner" as a trademark, and news outlets were eager to report that Kylie Minogue then filed a notice of opposition, claiming that Jenner's proposed trademark would “confuse audiences and dilute Minogue's brand."

Minogue later withdrew her opposition—no word on why—but the USPTO rejected Jenner's application anyway, finding it would be too similar to the already registered trademark, “Kylee," held by Mimo Clothing Corporation, because they would be in related categories (both include clothing and accessories) and would create a likelihood of confusion among consumers.

Jenner has since requested that the USPTO cancel the "Kylee" trademark, alleging its owner has not used it in commerce and has otherwise abandoned it. Which leads to . . .

4. Not Maintaining the Trademark

In order to keep registered trademark protections, the owner must continue to use the mark in commerce or else risk losing the rights to it. The owner also has to keep up-to-date on when their registration needs to be renewed. Required maintenance documents must be filed between the fifth and sixth year and between the ninth and tenth year after registration and then every ten years thereafter.

5. Neglecting to Enforce Your Trademark Protection

Once your trademark is registered with the USPTO, it's time to make sure all of that work wasn't for naught. What does that mean? It means you are the one ultimately responsible for making sure no one is infringing upon your trademark rights.

Failing to monitor and protect your trademark can have serious consequences, including the value of your mark being diminished and a loss of trademark rights.