Before a trademark application is submitted to the United States Patent and Trademark Office, a large amount of time and money may have already been invested into the selection of the mark. The process of trademark registration can take 18 months or more. Mistakes on a trademark application can, at best, cause further delay and require additional expense, and at worst, require that you restart the application process. We have identified 6 common mistakes that are often made on a trademark application. 

Mistake #1: Identifying the Wrong Party as the Trademark Owner in the Application

If an application identifies the wrong party as the owner of a trademark, it may be void. An application must be filed by the party who is the owner of the mark or has an intention to use the mark in commerce, on the application filing date.  An Applicant may be an individual, more than one individual, or an entity.

If you are a business owner, you may be wondering if you should list yourself individually or your business as the Applicant. Generally, the owner of the mark is the party who controls the nature and quality of the products sold or services rendered under the mark. 

Mistake #2: Incorrectly Identifying Goods or Services 

Every trademark application must include a list of the goods and services that will be sold under the mark. It is important that this list is accurate and complete because (1) a trademark registration only covers the goods and services listed on the registration, and (2) you must be using the mark in connection with the listed goods and services to obtain and maintain a registration.

Any goods or services that are not included in your application would not be covered under a resulting trademark registration. The USPTO has a list of acceptable identifications of products and services on its website but custom descriptions of products or services may also be submitted. Each good and service must also be listed under the proper Class number. Choosing the wrong trademark class(es) on your application can further delay the trademark registration process. 

Prior to obtaining registration of a mark, and in order to maintain a trademark registration, you must be continuously using your trademark in commerce in connection with the sale of your products and the provision of your services that are listed on your registration. You will be required to submit proof of use of your mark in connection with these goods and services during the application process. Being able to show use of the mark is critical to securing and keeping a trademark registration.

Choosing the right list of goods and services will ensure your resulting registration provides you with the protection needed for your brand.

Mistake #3: Selecting a Weak Mark or a Mark That is Not Eligible for Protection

Not all marks are eligible for trademark protection. 

Marks that are descriptive, generic, or confusingly similar to an existing mark may be refused registration. When selecting a mark, consider marks that are fanciful, arbitrary or suggestive. These are marks that are invented words (i.e. Pepsi), words that have no association with your goods or services (i.e. Apple), or suggestive of some qualify of your goods or services (i.e. Jaguar or Greyhound for fast cars/buses). 

Marks that are descriptive of your goods and services (i.e. creamy for ice cream) or generic (i.e. Coffee Shop for a coffee shop) may not be eligible for registration, with limited exceptions. Descriptive marks that have become distinctive of your goods/services through many years of use, may be eligible for registration. In some cases, descriptive marks may also be eligible for registration on the Supplemental Trademark Register. 

It is important to note that marks with geographical significance may also be considered descriptive and not eligible for registration, depending on the circumstances.

Selecting a strong trademark that your customers will be able to easily associate with your goods and services can contribute to the success of your business.

Mistake #4: Your Trademark Consists of a Surname Only

You may wish to use your surname as the trademark for your goods and services. However, a trademark that consists only of, and is primarily, a surname may not be eligible for registration. Whether a mark is primarily a surname for trademark registration purposes depends on a few factors. 

If you are the Applicant or you sign the trademark application on behalf of your business, and your surname is listed as the trademark, this supports a finding that the mark is primarily a surname. 

If the surname is very rare, has any other recognized meaning other than a surname or there are any other factors that support a finding that it is not primarily merely a surname, it may be eligible for registration. 

Mistake #5: Failing to Include a Proper Specimen

If you are already selling goods or providing services in commerce in connection with your mark, you will be filing an “in use” trademark application and submitting examples of use of your mark with the application. If you do not include proper specimens showing use of your mark, this can delay the trademark registration process and may add additional costs. 

Proper specimens for goods can be photos or images of the mark directly on products or packaging, labels or tags attached to the goods, on an in-store display of the products, or a B2C website where the products may be purchased.

Proper specimens for services can be examples of advertising of the mark where the services are described on either printed materials or websites. Photos or images of a mark displayed on a brick-and-mortar storefront, like a hair salon providing hair care services, may also be used.

Mistake #6: Not Consulting With a Trademark Attorney

Submitting a trademark application for your mark may not be the first step in the selection, adoption and use of your mark, but it is one of the most important steps. Mistakes on the initial application may delay the entire process, increase your costs, or even invalidate your application, forcing you to restart the process. 

Consulting with a trademark attorney can be helpful in understanding the specific requirements for a trademark application. If you are interested in filing a trademark application and would like further guidance on the process, please contact us.

Our trademark attorneys are experienced in handling all types of intellectual property and trademark matters and can help you take steps to secure protection for your trademark and minimize risks.