5 Common Trademark Mistakes

By Josh Gerben, Esq.

As a business owner, you understand the importance of protecting your brand.  That said, many businesses fail to take even the most basic steps to ensure a brand is receiving as much legal protection as possible.  Here are the most common trademark mistakes I see clients make time and time again:

1. Not working with an experienced trademark attorney
2. Not conducting a comprehensive trademark search
3. Failing to register your trademarks with the USPTO
4. Not actively policing your trademark once it’s registered
5. Not maintain your mark through consistent use and renewals

1. Not Working with a Trademark Attorney

Entrepreneurs, by nature, have a do-it-yourself approach to business.  This will no doubt benefit you as you develop your product or service, design your storefront, and hire employees, but taking the DIY approach to trademark registration could cost you time and money in the long run.  There are many detailed legal decisions that need to be made during the registration process, from conducting a trademark search to selecting the right international classes of goods and services that your trademark will represent.  In order to get the broadest protection possible for your mark, it’s wise to consider working with a trademark attorney.

Don’t just take it from me!  A recent study conducted by the University of North Carolina found that applications filed by trademark attorneys actually have a significantly higher likelihood of approval than those that did not.  While 57% of people filing without the help of an attorney received approval from the USPTO, the number jumped to 83% when submitted with the help of an attorney.  In fact, our firm works with many business owners that first went through the application process on their own, only to be rejected and forced to refile.  Avoid this costly and time-consuming mistake by working with an experienced trademark attorney from the beginning.

2. Not Conducting a Comprehensive Trademark Search

The USPTO will not approve your trademark if a confusingly similar mark is already in use.  Because of this, you should learn about potential similar marks before you submit your application with the USPTO.  While it’s certainly frustrating to learn your mark or one that’s similar, is already in use, it’s best to know that before you pay your fees and submit your application.  If you learn that your mark already exists, you have the ability to make the necessary changes to your mark before you submit your application.

Many business owners understand the importance of a trademark search, but they opt to use a free online search, or even Google, to conduct their trademark searches.  This may seem like a budget-friendly solution, but often, it’s not.  That’s because these searches typically only reveal exact matches to your trademark.  Unfortunately, most trademark disputes arise from confusingly similar marks, not exact matches, which means your free search may not turn up all possible trademark matches.  The software used by trademark attorneys, on the other hand, is much more comprehensive, revealing not only exact matches, but similar matches to your name, logo, or slogan as well. Engage with an experienced attorney to assist with your trademark search.

3. Failing to File with the USPTO

The United States is a first-to-use country, which means that you do have some common law rights to your trademark simply by using it in the marketplace.  It’s important to know, though, that these rights are extremely limited.  For instance, they only protect your mark in the small geographic region where your business is located.  This means the future growth of your business could be significantly restricted if you ever wish to expand to an area where your mark is already in use, or if you plan to sell your goods or services online.

Don’t forget to register all of your trademarks with the USPTO.  Typically, business owners focus on registering their business name, and that’s a great place to start, but your business likely has other marks that need the protection of trademark registration as well.   A trademark is something that represents your business or brand.  In addition to your business name, you should consider registering the names of your products or services, your logos, slogans, or even unique color schemes. Talk with your trademark attorney to get a full understanding of which trademarks your unique business should register.

4. Failing to Police Your Trademark

Your trademark is only strong if you police it.  While the USPTO approves and registers trademarks, it doesn’t enforce the exclusivity of their use.  As a trademark owner, this is your responsibility.  Others using your mark without your permission could dilute your mark’s strength, confuse potential customers, and possibly even damage your brand’s reputation.  You must monitor your trademark’s use, and if potential infringement is found, you should take immediate legal action.

Trademark monitoring may seem like an impossible task especially while you are trying to run a successful business.  Fortunately, most trademark attorneys offer trademark monitoring services.  They will notify you of any possible infringement, as well as work with you to determine the best course of action to stop the infringement.  In many cases, a cease-and-desist letter is all that is needed to stop unauthorized use of the mark, but occasionally, more formal legal action must be taken so that your mark remains in your control.  Working with an experienced attorney ensures that appropriate action will be taken quickly.

5. Failing to Maintain Your Trademark

A federally-registered trademark can remain in place forever, as long as you continue to use it and meet renewal deadlines.  It’s important to be consistent with the use of your mark, only using it in the way that it appears on your application.  If many people throughout your company will be using the mark, it might be wise to consider creating a style guide, outlining how your trademarks should be used on products, websites, and marketing material, to ensure their consistent use.

It is also extremely important to meet the renewal deadlines set by the USPTO.  For new trademarks, the first renewal will occur between the fifth and sixth year, and again between the ninth and tenth year.  After that, renewals will take place every ten years.  Pay attention to these renewal dates, and begin the process to renew well before the date approaches.  Failing to meet renewal deadlines could cause your trademark to be canceled.

Avoid Trademark Mistakes

Whether you are still in product development or your business is up and running, now is the time to begin the trademark registration process.  In order to get the broadest protection for your mark, avoid the most common trademark mistakes.  Work with an attorney and conduct a comprehensive trademark search.  Register all of your trademarks with the USPTO, and monitor their use in the marketplace.  If you find potential infringement, work with your attorney to take swift action.  Be sure to use the mark consistently, and meet renewal deadlines as well.  These tips will ensure your trademark, and your brand, will be protected now and well into the future.

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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.