7 Common Trademark Mistakes
Trademark mistakes can be costly, affecting your brand identity, time, and money. Registering a trademark is crucial for protecting your business, but even small errors can lead to significant issues. In this post, we’ll cover common trademark mistakes, their impact, and how to avoid them.
The Biggest Mistake: Neglecting a Comprehensive Trademark Search
One of the most expensive and all-too-common trademark mistakes is failing to conduct a comprehensive trademark search. A small business owner might believe that a quick online search is enough to determine whether their chosen trademark is available. However, skipping a full search can lead to legal conflicts and costly rebranding efforts down the road.
Let’s look at a made-up scenario to illustrate the potential costs of this mistake –
Skipping a Trademark Search: A Costly Mistake
GlowSkin, a small skincare brand based in California, has been thriving for two years, selling its products in third-party brick-and-mortar retailers throughout the state and making a handful of online sales. The brand’s success allowed them to scale up production, with hopes of expanding their online presence and entering larger retail markets. With this growth in mind, GlowSkin decided to file for a federal trademark to protect their brand nationwide.
However, GlowSkin made a critical mistake. Instead of conducting a comprehensive trademark search before filing, they skipped this crucial step.
About eight months later, the USPTO completed its review and refused their application.
The reason? The USPTO found that the name “GlowSkin” was too similar to Glo Skyn, a company with a federally registered trademark for similar skincare goods. Glo Skyn had been using its mark in commerce for 10 years and held a registered trademark for the last 7 years.
Now, GlowSkin faces two costly choices: fight the USPTO’s refusal or undergo a complete rebrand. Both options could have significant financial consequences.
Option 1: Hiring a Trademark Attorney to Fight the Refusal
If GlowSkin chooses to fight the refusal, they’ll need to hire a trademark attorney to handle their case. The attorney will need to argue that the two trademarks can coexist or that there is no likelihood of confusion between GlowSkin and Glo Skyn.
This process includes:
– Legal research and drafting of responses.
– Possibly filing a request for reconsideration or an appeal with the Trademark Trial and Appeal Board (TTAB).
– Attorney fees for consultation, filing, and representation.
Estimated Cost: $5,000 to $15,000, depending on the complexity of the case and the attorney’s hourly rate.
Option 2: Rebranding
The second option is rebranding, which involves much more than just changing the name. GlowSkin would need to:
– Develop a new brand name and logo.
– Create new packaging for their products.
– Update all digital assets, including their website and social media channels.
– Inform customers and retailers about the name change.
– Create new marketing materials, from business cards to advertisements.
Estimated Cost:
– New logo design and branding: $2,000 to $5,000.
– Reprinting packaging and labels: $5,000 to $10,000 (depending on stock).
– Updating website, social media, and digital assets: $2,000 to $4,000.
– Marketing and communication for rebranding: $3,000 to $8,000.
Total Rebranding Cost: $12,000 to $27,000.
Ultimately, GlowSkin’s decision to skip the comprehensive trademark search could cost them tens of thousands of dollars and months of delay—costs that could have been avoided with a thorough trademark search upfront.
Essential Components of a Trademark Search
A comprehensive trademark search isn’t just a search of the USPTO database. It should cover multiple areas to ensure that your chosen trademark is free of any conflicts.
Search of Federal Trademarks: Checking the USPTO database for registered trademarks is essential.
Search of State Trademarks: Some businesses may have state-level registrations, and these can pose problems even if the mark is not federally registered.
Common Law Databases: These searches look for unregistered trademarks. This includes business directories, social media platforms, and online marketplaces where businesses may be using the same or similar trademarks without formal registration.
Considering Similarities and Related Goods/Services
In addition to searching databases, it’s important to consider similarities in sound, appearance, and meaning.
Phonetic similarities, visual likenesses, or even similar meanings between trademarks can lead to confusion in the marketplace.
Relatedness of Goods/Services is another critical factor.
Goods or services could be considered related if:
- 1. They are identical, similar, or competitive.
- 2. They are used together or target the same consumers.
- 3. They are marketed alongside each other or sold by the same manufacturer or dealer.
Mistake 2: Not Having a Distinctive Trademark
Another common trademark mistake is not selecting a distinctive trademark. Trademarks fall on a scale known as the distinctiveness to descriptiveness continuum.
A distinctive trademark is easier to protect and less likely to face opposition during the registration process.
The distinctiveness to descriptiveness continuum –
Fanciful: These are made-up words like “Google” or “Xerox” and are the most distinctive.
Arbitrary: Common words used in an unrelated context, such as “Apple” for computers.
Suggestive: These suggest a quality or characteristic, like “Coppertone” for sunscreen.
Descriptive: These directly describe a feature or function of the product, such as “Cleaners” for a cleaning service. Descriptive trademarks can only be registered in specific situations, like when the trademark becomes unique due to being used widely in business for many years.
Generic: These are the least distinctive and are not registrable, like “Bicycle” for a line of bicycles.
Choosing a more distinctive trademark, such as a fanciful or arbitrary mark, will give your business stronger legal protection.
Mistake 3: Incorrectly Identifying Goods/Services
When applying for a trademark, it’s essential to accurately identify the goods or services that your trademark will cover. Failure to do so is another common trademark mistake that can cause complications.
You must include all relevant goods and services in your application. For example, if you sell clothing under your trademark, you must specifically state the types of clothing, such as t-shirts, jackets, and dresses. Similarly, if your trademark is for a mobile app, you need to clearly describe the app’s function and specify if it relates to a particular topic or industry.
Using vague terms like “clothing” or “a mobile app for pet owners” will likely lead to an Office Action from the USPTO. An Office Action is a formal communication from the USPTO requesting clarification or additional information about your application. Receiving an Office Action can delay the registration process and may require you to spend extra time and resources to address the issues raised, potentially hindering your brand’s growth and protection.
Conversely, including goods or services in your trademark application that you don’t plan to sell can complicate the process and lead to unnecessary fees. This mistake, known as “falsifying goods or services,” occurs when applicants list items they don’t actually use or intend to use with their trademark.
For example, a clothing company that sells t-shirts, jackets, and dresses but lists shoes they have no intention of selling is misrepresenting their goods.
Claiming a wide range of goods or services can result in requests for additional proof of actual use in commerce, even if you’ve already provided a specimen. If your trademark is registered, it might be audited, requiring evidence of use for all listed items. Intentional over-claiming can lead to your application being rejected or your registration canceled, so it’s essential to be truthful and precise in your application.
The USPTO requires precise language when describing goods and services.
Mistake 4: Improper Use of Trademark in Commerce
One of the key requirements for obtaining trademark registration is that the mark must be used in commerce. This means the trademark must be used in the sale of goods or services that Congress regulates, such as interstate commerce or commerce that affects more than one state.
For businesses that file an intent-to-use application, it’s crucial to use the trademark before the end of the intent-to-use application period. Failing to show proper use in commerce could result in the rejection of your application.
Mistake 5: Not Keeping Track of Trademark Filings
Once you’ve filed for a trademark, the process doesn’t end there. Ignoring correspondence from the USPTO is a significant mistake. If you don’t respond promptly to Office Actions or other communications, your application could be abandoned.
Monitoring your trademark application is critical.
Missing deadlines or not responding to inquiries can lead to the loss of your application, costing you time and money to refile.
Mistake 6: Failing to Monitor for Infringers
Even after your trademark is registered, your responsibility doesn’t end. Failing to monitor for potential infringers is a dangerous mistake. As the USPTO points out, “You are responsible for enforcing your rights if you receive a registration, because the USPTO does not ‘police’ the use of marks.”
Regularly monitoring and taking action against infringers is essential for maintaining the strength of your trademark. If you fail to act, it can weaken your rights and make enforcement more difficult in the future.
Mistake 7: Not Filing Post-Registration Documents on Time
After your trademark is registered, certain documents must be filed to keep your registration active. Failing to submit these post-registration documents on time can result in the cancellation of your trademark.
Key deadlines include:
Declaration of Use: Filed between the fifth and sixth years after registration.
Renewal Application: Filed every ten years after registration.
Missing these deadlines can lead to the loss of your trademark rights, forcing you to reapply and restart the process.
Conclusion
Avoiding these trademark mistakes can save your business time, money, and hassle. The most significant takeaway is the importance of a comprehensive trademark search. By ensuring your chosen mark is free of conflicts and monitoring it after registration, you can build a strong, protected brand.
If you’re ready to take the next step, TradeMark Express can help. Our team specializes in comprehensive trademark searches and ensuring your trademark application process runs smoothly. Don’t risk costly mistakes—contact TradeMark Express today for assistance with all your trademark needs.