Avoid These 7 Trademark Mistakes

Avoid These 7 Trademark Mistakes

by Roberta Codemo, September 2015

A company puts a lot of time into building its brand. Everything from the name to the packaging is protected under trademark law. The term trademark is used interchangeably with service marks, and includes words, phrases, symbols and/or designs that identify the company’s products or services. Below are seven common trademark mistakes to avoid throughout the trademark registration process.

1. Using the TM Symbol Incorrectly

The “TM” symbol is often called a “poor man’s” or “common law” trademark, and its reach is limited to the geographic boundaries within which your company operates. Should another company file a trademark application to use the exact trademark, that company supersedes your right to use the original one because yours won’t hold water. To protect the trademark, register it with the U.S. Patent and Trademark Office (USPTO). Once a company has filed a trademark application and received a trademark grant from the U.S. Trademark Office, it can use the ® symbol. 

2. Not Using the Trademark In Commerce

A company does not have to register a trademark; however, it must apply for a trademark to protect it. Before applying for a trademark, a company must use it in commerce in connection with specific products and services. If a company fails to use a trademark in commerce prior to applying, it can file an Intent-to-Use application with the U.S. Trademark Office stating its intent to use the trademark in commerce at a later date. The trademark registration process will not proceed until a company begins using the trademark in commerce. Once the trademark is being used in commerce, the company can then file a statement of use—a document declaring how the trademark is now being used in the marketplace. A company has up to 36 months to file a statement of use. 

3. Searching For Similar Trademarks

The USPTO recommends searching its trademark filing database—including abandoned or canceled trademark registrations—for exact or similar trademarks that have already been registered or applied for or are already in use. Trademark law operates on a priority basis—the company that uses the trademark first owns it and takes priority over later users. Failing to conduct a thorough search can lead to serious consequences later if the trademark is already in use.

Note: Tag lines are also enforceable trademarks, so don’t forget to search and clear these as well.

4. Not Having a Distinctive Trademark

A company’s trademark must be distinctive. There are five distinctive trademark categories: arbitrary, descriptive, fanciful, generic and suggestive. A trademark application that uses descriptive terms to merely describe a company’s products or services will be rejected by the USPTO. Likewise, generic terms are ineligible for trademark protection because they refer to a general class of products or services rather than a company’s brand. For example, if you are getting a trademark for a coffee shop, the name ‘Best Coffee in Town’ or the slogan ‘Fresh, Hot, Coffee – Fast’ will not likely be granted a trademark. The terms are simply too generic, most coffee shops think they are the best in town, and they all serve fresh, hot coffee as quickly as they can.

A company should choose arbitrary, fanciful or suggestive words or phrases that set your brand apart from other products or services already on the market or add a term unique to your brand.

5. Choosing the Wrong Trademark Class

A company must describe, in detail, the products or services its trademark will apply to on the trademark application form. Your trademark will only apply to these products or services (sometimes referred to as trademark classes). For example, if you’re selling t-shirts, you can’t register your t-shirt logo under the class for car repair. That example is pretty obvious, but choosing the correct class can become difficult: would you think there’s a difference between selling a button-down men’s shirt with a collar and the same shirt without a collar? To the USPTO, these are different trademark classes and if you only apply for collared shirts, your trademark offers no protection for shirts without collars.

While it might be tempting to list every product or service imaginable on the application, this is illegal. Each individual product or service listed on the application must carry the company’s trademark before the Trademark Office will issue a trademark registration. A company needs to broaden its scope and think about product expansion beyond its current offerings. Keep in mind, however, if your application contains false or misleading information, your company risks having its trademark revoked. 

6. Not Monitoring the Status of Your Application

The USPTO can issue an Office action—a letter explaining problems or issues with a trademark application—at any point during the registration process. An Office action will include details about how, and when, you must respond to resolve the issue. A company needs to monitor the status of its pending application every three months between the filing date and the issuance of the registration. A company can use the Trademark Status and Document Retrieval system to track the status of its application. If the company fails to respond to an office action within six months after issuance, the application can be abandoned or canceled, requiring additional fees to reinstate the application. 

7. Not Enforcing Trademark Protection

A company is responsible for enforcing its trademark. The USPTO makes every attempt to ensure no one infringes on a company’s trademark; however, the owner of the trademark is responsible for bringing legal action against an offending party. A company needs to develop a strategy to safeguard its trademark and needs to be vigilant to ensure no one infringes on their trademark. If another company does infringe on your trademark, not only can this result in costly legal proceedings but it could result in losing your trademark rights. 

A trademark protects a company’s brand. A misstep by a company can derail the trademark registration process and lead to cancelation or revocation of your trademark rights. Filing a trademark application is complex and time-consuming and requires a knowledgeable person to ensure the paperwork is completed properly. It is important to understand trademark law to avoid making common trademark mistakes during the trademark registration process. If you are unsure, hire a trademark attorney who understands trademark law and can guide you through the process. Once your trademark is registered, vigilance is key to safeguarding your company brand.

LegalZoom can help you throughout the trademark process. Use our trademark search service to find similar trademarks. When you’re ready, we help you complete your trademark application and file it with the USPTO.