5 Mistakes to Avoid When Applying for a Trademark

Nov 18, 2022 | Business Law

As a business owner, your brand is one of your most valuable assets. To protect your brand, you need a registered trademark—and to get a registered trademark, you need to file a trademark application.  

At first glance, the trademark registration process seems relatively simple: application → examination → publication → registration. No problem, right?

Not necessarily. According to the United States Patent and Trademark Office (USPTO), about 18% of trademark applications are rejected, often due to mistakes that could have been easily avoided had the application been adequately prepared. 

Applying for a trademark can be a complex process. To avoid going through round after round of application rejections and revisions, be sure to avoid these common mistakes. 

Mistake #1: not checking for trademark availability

A critical step of the trademark registration process? Checking that you can, in fact, use the trademark you have in mind. To do this, you need to conduct a thorough search. (No, a Google search will not offer the results you need.) 

To make sure no one else has already claimed your potential trademark, conduct a search using USPTO’s Trademark Electronic Search System (TESS) to identify any trademarks that are similar or identical to yours. For global businesses, you should also run a search through the WIPO global brand database

While you can search these databases yourself, it’s imperative that you thoroughly review the results—a process that can be time-consuming and challenging if you don’t know what to look for. 

Mistake #2: not having a distinctive trademark

For your trademark to be approved, it needs to be strong and distinct. Not only does this increase its chances of being available for use, but it also prevents others from using it without your permission—and avoids confusion and potential mix-ups with other brands that have similar trademarks. 

Qualities of a strong trademark 

A strong trademark is one that is creative and unique. More specifically, it’s fanciful, arbitrary, and/or suggestive. 

Fanciful trademarks consist of completely made-up words—think Exxon, Kodak, and Pepsi. Because these words didn’t exist before, they elicit strong connections to their brands. 

Arbitrary trademarks are words that don’t have any obvious association with their brand—think Apple for computers or Camel for cigarettes. Interestingly enough, a company that does, in fact, sell apples or camels would not be able to use trademarks with those generic terms! 

Suggestive trademarks whose names suggest or imply the meaning of the brand—think Netflix, Facebook, or Coppertone. While you can guess the product or service in question by its name, it’s not stated outright. 

Qualities of a weak trademark

Weak trademarks aren’t just hard to protect against competitors, they’re also highly unlikely to get past the initial stages of the application review process. 

Weak trademarks are typically descriptive—think “cold” for ice cream or “creamy” for yogurt—or generic—“apples” for an apple orchard or “pizza shop” for, well, a pizza shop. 

Mistake #3: submitting incorrect or improper information

Accidents happen. We get that. But, unfortunately, any inaccurate information appearing in your trademark application can result in an automatic rejection. 

If you put the wrong contact information—like the wrong trademark owner name—your trademark may even be titled to the wrong entity. 

Mistake #4: not using your trademark in commerce

Before applying for a trademark, you need to use it in commerce by selling or transporting goods to people who live outside your state. 

You’ll also need to provide evidence showing that you’re using your trademark in commerce. Do this by submitting a real-life specimen of your trademark being used in commerce with your products or services—on the goods or their packaging, in sale displays, or in advertising, for example. 

Mistake #5: not working with a trademark attorney

Pretty complex, right? The good news is that you don’t have to do it all yourself. There’s a trademark attorney out there ready to help you correctly file your trademark application and protect your brand’s intellectual property. 

A trademark attorney will guide you through the trademark registration process, offering support and legal advice along the way. After all, registering your trademark is just the tip of the iceberg—you’ll also need to enforce trademark rights and protect it from infringement. 

Working with a trademark attorney can also help you gain: 

  • Legal insights about your business as a whole
  • Access to software for thorough trademark searches
  • Assistance with preparing your trademark application quickly and accurately
  • Ongoing support with enforcing and maintaining your trademark rights after it’s secured
  • Representation at USPTO’s Trademark Trial and Appeal Board

While your trademark is valuable, it’s only one aspect of your business. By handing the reigns over to an experienced attorney, you can focus more of your energy on what you do best: running your business. 

Avoid trademark mistakes with a Texas trademark attorney

At Shann M. Chaudhry, Esq. PLLC, our team of experienced trademark and business law attorneys is here to help guide business owners through the complexities of the trademark process.

Contact us today to learn more and schedule a consultation.

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