There’s a lot you need to know before you file a trademark. In fact, 80% of DIY filers get their trademarks refused! We are sharing some of the most common mistakes and blunders that people make when coming up with, filing, and protecting their trademark. These mistakes can lead to anything from losing some of the rights that you would otherwise be entitled to, to complete inability to secure any meaningful rights in your brand. As always, we recommend working with a licensed attorney throughout your trademarking process, and we here at Trademark Garden are always happy to walk you through the process, but keep the following in mind as you go.
Selecting a trademark that is too descriptive of the goods/services on offer
Not all words and phrases can be registered with the government as a trademark, as the government requires that the word/phrase used can function to identify a specific brand in a given market. What this means is that words that describe the goods and/or services in general cannot serve as a trademark. For example, the USPTO is unlikely to allow “PHONE FIXED IN 24 HOURS” to serve as a trademark for 24 hour phone repair services because the trademark describes any 24 hour phone repair service. On the other hand, something like “WHAMO! 24 HOUR PHONE REPAIR” is a lot more likely to be accepted as the word “WHAMO!” does not merely describe the service, and could therefore be used to identify your specific phone repair service. For a more complete discussion of trademark distinctiveness, read more here.
Filing a trademark based on a logo on the front of a shirt
Trademarks for clothing are some of the most common trademarks out there, and the most common mistake made by people filing such trademarks is to provide a photo of the front of a shirt bearing the trademark as the “specimen of use” to secure registration. The USPTO requires photographic evidence of actual use of the trademark in order to register and application, and for clothing applications, any use of the trademark on the front of clothing is considered “merely ornamental” and therefore unacceptable. Instead, you will need to submit photographs of the tags, being either hang tags, or back-of-the-neck tags, bearing the appropriate trademark in order to secure registration.
Filing a trademark in your own name when it is actually used by your company
One of the most common mistakes made by small business owners filing their first trademarks for their startup is to file those trademarks in the name of the business owner, when the trademark will actually be used by the business entity, such as a corporation or LLC. Remember, the entire purpose of creating a business entity is to separate the assets of the entity from those of the owner as an individual. As such, if the trademark is currently used, or is intended to be used, by the business and not the business owner as a private individual, the trademark must be filed in the name of the business entity. If such a business trademark is filed in the owner ‘s name, it is considered to be void at filing, which is an incurable error, and the application must be refiled. The USPTO will not actually check who is using the trademark, so such a fatally flawed application will actually proceed past USTPO examination, but should the trademark ever need to be enforced, any competent attorney for the opposing side would spot the error in filing, and use it to cancel your trademark.
Using “marketing speak” in the identification of goods and services
Many modern companies use terms like “solution,” “turn-key,” “next generation,” and “leading” to describe their goods and services on their websites, and in their advertising copy. It then seems natural to incorporate such terms into the identification of goods and services provided to the USPTO as part of your trademark application. Do not do this! The USPTO requires that the trademark be described in plain, concise, and complete language, without any jargon or over-broad terms. For example, if your product is downloadable software, describe it as downloadable software, do not describe it as a “solution” or your application will be refused for being impermissibly vague and over-broad.
Filing on items that you are not actually selling at the claimed date of first use
When filing your trademark, you will be required to identify the goods and services that you are providing under the trademark, and although you will need to provide a specimen of use for each class that you file on, you will not need to provide specimens for each individual item in the class. For example, Class 009 contains both computer modems and flashlights. You could, in theory, file on both computer modems and flashlights, provide a specimen showing your use of the trademark on computer modems only, but get the registration for both modems and flashlights as they are in the same class. This is illegal, though unfortunately quite common, as again, the USPTO only requires a specimen for the class, and not for each individual item. Besides being illegal, this practice is best avoided, as it leaves the trademark permanently open to potential cancellation by third parties on grounds that it was filed fraudulently.