4 Common Trademark Registration Mistakes to Avoid
Registering a trademark is an important part of building a brand and growing name recognition. However, trademark filers sometimes make common trademark registration mistakes. The following provides a discussion of these mistakes and steps that can be taken to avoid them.
Common Trademark Registration Mistakes
1. Overly Narrow Goods and Services Claimed in Trademark Application
When filing for a trademark registration, applicants must describe the goods and services that they intend to register with the goods and services. One common mistake that applicants make is to limit the goods and services to an overly narrow phrase or description. As such, the trademark, if approved for registration, may not cover the complete spectrum of goods and services that the applicant aims to capture.
2. Overly Broad Goods and Services Claimed in Trademark Application
Similarly, as an applicant can use too narrow of a description of goods and services, an applicant may try to file for too overly broad of a description. If the goods and services are overly broad, rejection may occur for several reasons. First, the trademark examiner may reject the initial application because they believe that the description of goods and services does not match the specimen filed with the application. In other words, the applicant is filing to register a trademark with goods and services that they do not demonstrate trademark use of in the application. Another way an overly broad description may result in a rejection is if the description, as written, causes the potential trademark to overlap with an existing trademark.
3. Improper Specimen of Trademark Use
Submitting an improper specimen is another common way that applicants may sabotage their own applications. Often, trademark applicants may file an application with their trademark drawn one way. After talks with their marketing department, however, they may eventually use their trademark in a different manner. As such, actual use of the trademark with mismatching colors, different fonts, use of shapes, etc., in a way that differs from the application may all cause the trademark application to be rejected.
4. Wrong Trademark Applicant
In addition to the proper goods and services, a trademark application needs to include the proper applicant, who is the user or intended user of the trademark in commerce. Often, the applicant will be a company as opposed to an officer or founder of the company if the company is using the trademark in commerce. A mistake as to the wrong trademark applicant can present serious problems with obtaining the registration and later enforcing the trademark.
Additional information about trademark registration can be found in our article, Trademark Protection in the U.S.
Hiring a Professional to Avoid Trademark Registration Mistakes
Enlisting the help of an experienced trademark attorney can help an applicant draft proper descriptions of goods and services and avoid rejection of applications due to improper specimen use or the selecting the wrong applicant. While attorneys vary in what they charge, a client can expect a trademark cost to range between $500 to $3000 plus filing fees charged by the United States Patent and Trademark Office.
Klemchuk LLP is an Intellectual Property Law, Litigation, and Transactions law firm located in Dallas, Texas.The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights. The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. The firm publishes the following blogs: Intellectual Property Law, Conversations with Innovators (interviews with thought leaders), Leaders in Law (discussions on timely law topics), and Culture Counts (thoughts on law firm culture and the business of the practice of law).