Brands often rely on a memorable name, quality reputation, and a catchy slogan to succeed. Although this might seem straightforward, it’s surprisingly easy to make an error or omission regarding your trademark that could allow others to infringe on the brand you are working to build, or worse, could cause you to lose your trademark altogether.
As such, it’s important to try to avoid mistakes through every step of the trademark process—from selecting the mark to keeping the trademark “maintained” throughout the years. The following list explains how to avoid such mistakes in greater detail:
1. Mistakes when choosing a Trademark
The trademark(s) your business chooses is/are essential to establishing a company that customers will know and respect. You can trademark almost any aspect of your brand, including your name or slogan, images or logos – or a combination of the two.
The first thing to protect is usually your company name, but you still need to be careful as not every name will be protectable under IP law. A strong trademark may be fanciful (made-up, like Pepsi®), arbitrary (a real word that bears no correlation to the product, like Apple®), or suggestive (Greyhound® is a bus service dedicated to speed and reliability), and shouldn’t clash with any pre-existing brands. A mark that is too “generic” or is too close to an existing mark will likely be denied by the USPTO.
In selecting any of your marks or brands, be careful about choosing anything too similar to pre-existing brands. One example of this was Red Shield being ordered not to be used in insurance services, as it was too similar to the already-trademarked Blue Shield®. You can run a check for pre-existing trademarks through the USPTO website to ensure your brand is sufficiently unique.
Also before you spend time and money to secure a trademark, we suggest you conduct Google, Bing, Yahoo, Amazon, Ebay, Yelp, Open Table, Resy and any other industry specific searches on your own to assist in narrowing down a potential candidate before talking to an attorney to ensure that you are on the right track.
2. Registering Your Trademark
One common mistake made when applying for trademarks without an intellectual property attorney is incorrectly categorizing your mark as being already in use in commerce when the mark is in fact not being properly used, in which case the application would need to be filed on an intent-to-use basis. The requirements for proving use in commerce are more complex than most people think. Opening an entity under the brand name or obtaining a website domain, for example, do not equate to use in commerce.
3. Maintaining Your Trademark
Following the successful registration of your trademark, you need to submit declarations and renewals at specific intervals with USPTO to keep your registration “alive”. As part of these submissions you need to show the USPTO proof of how you are using your trademark in commerce which must illustrate the exact trademark registered on the goods or services it was registered for.
The first post-registration submission is the Declaration of Use or Excusable Nonuse due along with the appropriate fees six years after the registration with the first “Renewal” then due on the ten year anniversary of the registration. Not filing the declarations and renewals or failing to pay the applicable fees could cancel your registration, and any protections will cease.
4. Dead Trademarks
If you allow your trademark to lapse for any reason, there are ways you can recover the IP. However, this can be a long and expensive process.
The best way to ensure your trademark is properly registered and protected – and stays that way – is to speak to a trademark attorney. We are always on-hand to provide you with the latest information and advice.
Speak to us today to find out how we can help you create a memorable, effective, and (most importantly) protected trademark.
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.