Securing a trademark is a necessity for companies and individuals looking to protect their intellectual property. When applying for a trademark, it is critical to determine that all of the requirements of the United States Patent and Trademark Office (USPTO) have been met. Errors during the trademark application process can create unnecessary delays in receiving your trademark. Many trademark applicants hire experienced trademark lawyers to attempt to ensure that their application is completely accurate, and without any common trademark mistakes. You can learn more about applying for a trademark by contacting the dedicated trademark lawyers of Mindful Counsel at (480) 422-6246.

What Invalidates a Trademark?

The USPTO considers certain types of trademark application errors as “unfixable”, which means the applicant will need to start from the beginning and submit a new trademark application if they make one of these mistakes.

Wrong Trademark Owner

A trademark application must include the legal name of the trademark owner and the type of entity. Entity types include individuals, sole proprietors, corporations, partnerships, LLCs, and others. The owner is not legally required to fill out the application themselves, but they must be accurately identified in the application.

This mistake cannot be fixed once the application is submitted, therefore it is important to get it right the first time. For example, the applicant would not be able to add a colleague’s name as a joint owner or assign joint ownership to the applicant and their colleague. The only option is to submit a new application that identifies both parties as the owner of the trademark.

Incorrect Goods and Services

Trademark applicants must also specify which goods and services they use or intend to use with the trademark. This designation must identify the actual goods and services that will be provided under the trademark, not how the trademark itself will be used.

For example, an applicant who produces clothing would register their trademark for clothing. A common error might be applying under the “labels” designation since the trademark appears on the clothing label, but the good itself is clothing, not labels.

Conflicts With Existing Trademarks

A trademark application will be rejected if the trademark is likely to cause confusion with another registered trademark or a trademark currently in the application process. The USPTO might make this evaluation if the trademark is too similar in appearance, sound, or meaning, and is also used with related goods and services.

Generic Trademarks

Trademarks cannot have generic names for the goods and services that will be provided under the mark. For example, a software company could not trademark the name “Software” because this common term can be used by other businesses to refer to software products.

Commonly Used Phrases

The USPTO will refuse a trademark registration for phrases or slogans that are commonly used to express ordinary concepts or sentiments. This is because trademarks must indicate the source of goods or services.

Fixable Errors in the Trademark Application Process

Certain types of common trademark mistakes may be fixed without the need to submit a new trademark application. If you are unsure whether you can fix a trademark mistake, contact the team of trademark attorneys at Mindful Counsel to learn all of your legal options.

Descriptive Trademarks

The USPTO is against “merely descriptive” trademarks that only describe a certain aspect of the goods and services offered under the trademark. For example, a trademark application for the word “salty” to describe potato chips would likely be rejected.

Names Included Without Consent

A trademark that includes the name, image, or signature of a living person must have the written consent of that person to use and register the trademark. The USPTO will reject the application without written consent.

Surname-Only Trademarks

A trademark may not be registered under a surname (last name) alone because many people share the same surname. The only exception would be if the public has come to associate the surname with the specific goods or services provided under the trademark. For example, the surname Ford is associated with automobiles, so the name is allowed to be trademarked.

Wrong Type of Specimen

Trademark applications must include specimens, which are samples of the trademark as it is used in commerce. The specimen provides proof of how the applicant is using the trademark in the marketplace with the goods and services specified in the application. If the specimen in the application is the wrong type or does not show use as a trademark, the application will be rejected.

What Are Three Pitfalls to Avoid When Seeking a Trademark?

Trademark applicants should make sure to avoid these common errors when applying to register their trademark:

• Failure to search for conflicting marks – Applicants should always conduct a comprehensive search for similar trademarks before they file their application. This can prevent filing an application that is doomed for rejection due to the trademark being confusingly similar to another mark.
• Failing to police a registered trademark – Once a trademark is approved and registered, the trademark owner is responsible for ensuring that others do not use it without permission. The trademark owner must monitor its use and take legal action if its intellectual property is infringed upon.
• Failure to maintain a trademark – A successful registration is not the end of the trademark registration process. Trademark owners must continually renew their trademarks and be consistent in the way they use the trademark. New trademarks must be renewed between the fifth and sixth year, and again between the ninth and tenth year. After that benchmark, the trademark must be renewed every ten years.

Do You Need a Lawyer to Register a Trademark?

The United States Patent and Trademark Office only requires an attorney for foreign-domiciled trademark applicants and registrants. However, although trademark applicants are not legally required to hire an attorney, they should still consider doing so. The registration process is a complex legal process that requires complete accuracy, and an experienced attorney can use their knowledge of the system to make the process go smoothly for their clients.

Contact the Experienced Trademark Attorneys of Mindful Counsel

Are you worried about making common trademark mistakes during the registration process? At Mindful Counsel, our experienced trademark attorneys are prepared to guide you through each step of the process and help you ensure that you meet all USPTO requirements. Contact our office today at (480) 422-6246.