3 Common Trademark Filing Mistakes

From deciding on a name to submitting a trademark application with the USPTO, branding your company and protecting its intellectual property is an exciting, yet complicated process. It’s critical to ensure you understand how to choose a trademark and register it before jumping into the process.

As a trademark-focused law firm, we frequently have businesses come to us for advice on their refusals and to correct their applications. Fixing these issues can be expensive and timely, however, many of these problems are completely avoidable.

Here are three of the most common trademark mistakes we see trademark owners make and how you can avoid them.

1. Falling in love with a name before running a thorough trademark search.

The most common trademark mistake we see owners make is falling in love with a name for their business, product or service without running a trademark search to confirm it’s clear to use and register.

Many businesses will go to a marketing agency and come up with a new name that they are set on using from then on out. They might do a quick Google search to see if anyone else is using it, and then they come to us for help registering the mark.

However, in most cases, the trademark search you can do online doesn’t come close to the tools that a professional trademark attorney has available to them. For example, our firm’s software is a professional grade software used by Fortune 500 companies to look for not only identical trademarks that might exist, but for same and similar trademarks as well.

The most common refusal you’ll receive in a trademark application is not for a trademark that’s identical to yours, but for one that is potentially too close to yours, which would ultimately cause confusion among consumers in the marketplace.

To avoid this issue, it’s incredibly important to run a thorough trademark clearance search and confirm the name is legally clear before falling in love with it.

2. Waiting too long to file a trademark application.

Another common mistake we see is not filing a trademark application soon enough. The moment you file a federal trademark application is the moment you receive priority in your trademark. From the day you file going forward, your rights have technically started so long as that application ultimately registers.

If you’re coming up with a new product or business, but don’t start the trademark registration process for six months, somebody else could come in and file a same or similar trademark that will ultimately block your application.

By sitting on a trademark filing, you can cause a whole host of problems down the road.

3. Filing by yourself or through an online service.

We often have trademark applicants call us to fix applications they tried to file on their own or through an online filing service.

Trademark applications are complex and nuanced, meaning they can be difficult to complete. While some of the questions, such is who is the trademark owner, can seem simple to answer, if you get it wrong, it can result in major legal issues down the road.

You may even want to use an online trademark filing service to file your application, and there are plenty that offer incredibly low prices to submit your application with the USPTO.

The downside to these services is that you’re only getting access to a software platform that allows you to answer some questions and then will submit a trademark application for you. There is no true professional review by a trademark attorney at that price. There’s just too much time that goes into answering all the questions in a trademark application correctly.

When trademark owners file themselves or use these self-help services, do they ultimately result in a registered trademark? Sure. Some do. But a lot of them don’t.

While nobody likes legal fees, hiring an experienced attorney to file your trademarks will save you headaches and even more money down the road. Many firms, like our own, can even provide flat fees rates for this type of service.

Ready to protect your trademarks? Contact us for a complimentary consultation or to find out more information on our Flat Fee Trademark Search and Registration Package.

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Josh Gerben, Esq.

Josh Gerben, Esq. is a nationally recognized trademark attorney and the founder of Gerben IP. Since launching the firm in 2008, he has overseen the registration of over 10,000 trademarks and handled over 1,500 trademark disputes. Josh's practice focuses on building and defending global trademark portfolios for clients. These clients include entrepreneurs, private equity-backed businesses, athletes, celebrities, and public companies. Frequently quoted by major media outlets like CNBC, CNN, The New York Times, and The Wall Street Journal, Josh is widely regarded as a leading authority in trademark law.