You’ve spent months perfecting your brand name, designing your logo, and building your business around a trademark you believe is yours to protect. But one simple mistake on your trademark application could derail everything—forcing you to start over, rebrand, or worse, face legal challenges down the road.
While some trademark application errors can be corrected with amendments, others are fatal flaws that require starting completely over with a new application (and new fees). Understanding these critical mistakes before you file can save you thousands of dollars and months of frustration.
Not all mistakes are created equal. Trademark application errors fall into three distinct categories, each with different consequences for your brand protection strategy.
These errors cannot be fixed once your application is submitted. They require abandoning your current application and starting over with new filing fees.
The Mistake: Incorrectly identifying who legally owns the trademark in your application.
Your trademark application must specify the exact legal owner—whether that’s you as an individual, your LLC, corporation, or partnership. This isn’t about who fills out the paperwork; it’s about who actually owns the trademark rights.
Real-World Example: Sarah and Mike co-own “Coastal Coffee Roasters” as equal partners. Sarah files the trademark application but lists only herself as the owner. Even though she did the paperwork, both partners legally own the trademark. Sarah cannot simply add Mike’s name later—they must start over with a new application identifying both as joint owners.
The Mistake: Describing what displays your trademark instead of what you actually sell.
In your application, you need to list the specific goods or services that your trademark covers, either those you already sell or those you plan to offer. What matters is identifying what you provide under your trademark (for example, clothing, software, or consulting services), not simply how you display or use the name (such as on websites, ads, or merchandise).
Real-World Example: A craft brewery wants to trademark their beer brand name. Because the trademark appears on bottle labels, they mistakenly list “labels” as their goods instead of “beer.” The USPTO will refuse this application because the brewery sells beer, not labels. The trademark protects the beer itself, regardless of where the brand name appears.
Some trademarks simply cannot be registered because they don’t function as source identifiers.
Generic trademarks use common, everyday names for products or services. Examples include:
Everyone in an industry has the right to use generic terms, so no one can claim exclusive trademark rights to them.
These issues are difficult to overcome but may be resolved with proper legal strategy and evidence.
The Mistake: Choosing a trademark too similar to one already registered or pending.
Trademarks don’t need to be identical to conflict—they can be similar in sound, appearance, or meaning when used with related goods or services.
Examples of Confusing Similarities:
This is where comprehensive trademark research becomes crucial. A thorough trademark search examines:
Professional trademark research helps identify potential conflicts before you invest in an application, allowing you to make informed decisions about your brand strategy.
These common errors can typically be resolved during the application process.
The Mistake: Choosing a trademark that only describes your product or service.
Descriptive trademarks cannot be registered (on the Principal Register) without proving they’ve acquired distinctiveness through extensive use and consumer recognition.
Examples of Descriptive Trademarks:
Pillows are soft, cereal is crunchy, and lavender describes the scent of the soap – they directly describe inherent characteristics of the goods themselves.
The Solution: If your trademark is descriptive, you may need to provide evidence of acquired distinctiveness (like consumer surveys or extensive advertising records) or consider registration on the Supplemental Register as a stepping stone.
The Mistake: Including someone’s name, image, or signature without their written permission.
This applies to both famous individuals and private citizens whose names or likenesses appear in your trademark.
The Solution: Obtain written consent from any individual whose name, portrait, or signature appears in your trademark before filing your application.
The Mistake: Trying to register a surname alone without evidence of distinctiveness.
Common surnames cannot be trademarked unless they’ve become associated with specific goods or services in consumers’ minds.
The Solution: Provide evidence that consumers recognize your surname as identifying your business specifically (like “Ford” for automobiles) or add distinctive elements to make it registrable. Without this evidence, surname-only trademarks may be registered on the Supplemental Register instead of the Principal Register.
The Mistake: Submitting specimens that don’t show proper trademark use.
Your specimen must demonstrate how you actually use your trademark in commerce—not mock-ups, stock photos, or digital alterations.
Common Specimen Problems:
The Solution: Submit authentic specimens showing real commercial use, such as actual product labels, packaging, or legitimate service advertisements.
Before investing in a trademark application, comprehensive research helps you:
Identify Potential Conflicts Early: Professional trademark searches examine federal trademark databases, state trademark records, and common law sources to uncover potential conflicts that could derail your application.
Make Informed Branding Decisions: Understanding the trademark landscape in your industry helps you choose stronger, more defensible brand names.
Avoid Costly Mistakes: Discovering issues before filing prevents application abandonment fees and rebranding costs.
Develop Backup Strategies: Research reveals alternative branding options if your first choice faces obstacles.
When selecting a trademark services provider, ensure they conduct thorough searches covering all relevant databases and examining similarities in sound, appearance, and meaning across related goods and services.
Trademark application mistakes range from minor inconveniences to brand-threatening disasters. While some errors can be corrected through the application process others force you to abandon your application entirely and start over with new fees.
The most effective protection against these costly mistakes is comprehensive trademark research conducted before you file. Professional research identifies potential conflicts, helps you choose stronger trademarks, and provides the information needed to make strategic branding decisions.
Remember: your trademark is one of your business’s most valuable assets. Protecting it properly from the start saves time, money, and protects the brand equity you’re working so hard to build.
Don’t let a preventable mistake derail your trademark application. TradeMark Express only conducts comprehensive research – our detailed research reports help you avoid costly application mistakes and choose trademarks that stand the test of time.
Order your comprehensive trademark search today and get the information you need to make confident branding decisions.
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