3 Common Trademark 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 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.

3 Common Trademark Mistakes Trademark Owners Make

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 him or her. 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 an identical trademark 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 trademark search and confirm the name is legally clear before falling in love with it.

2. Waiting too long to file a trademark application.

The second most 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 does register.

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, you can cause a whole host of problems down the road.

3. Using an online filing service.

Another mistake we often see is when people call us to fix applications they tried to file on their own or through an online filing service.

There are various online trademark filing services 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 people use these self-help services, do trademark registrations ultimately issue? 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.

Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

Do you need assistance with a trademark matter?

Contact an Attorney Today

Contact Us
Back to top