Does your business have a unique, catchy name, logo, and symbol? If so, you might need to apply for a trademark to prevent people from using and copying them without your permission. But first, what is a trademark?
A trademark is an intellectual property that represents and separates a business from others. Applying for a trademark provides you exclusive rights to the use of the following:
- Company name
- Brand name
- Logo or symbol
For example, Coca-Cola filed a trademark to protect its unique brand name, logo, and bottle from unauthorized use, copying, and distribution. Without a trademark, everyone can use their name, logo, and bottle without any liability.
However, applying for a trademark is no easy task. This is especially true if you haven’t tried using the United States Patent and Trademark Office’s (USPTO) Trademark Electronic Search System (TESS). You’ll likely end up making mistakes along the process.
Of course, making mistakes isn’t an option. You can hire a lawyer to do everything for you, but if you lack the budget to do so, you must learn the actions you must take to complete the process properly. To help you get started, below are the common mistakes you need to avoid during trademark registration to prevent delays and disappointments.
1. Failure To Respond To Office Action
If you received an office action from the trademark office or USPTO, it means that your trademark application has an issue. The letter includes why they rejected your application or what requirements you should submit to satisfy their conditions.
As an applicant, it’s your responsibility to respond to an office action within six months. Otherwise, USPTO will permanently reject and abandon your application. Of course, the fees you paid earlier won’t be refunded.
Filing a trademark office action response with the USPTO can be overwhelming, but it doesn’t have to be. Below are the steps to take when responding to a trademark office action:
- Step 1: Talk To Someone From USPTO – The trademark office has a great team of administrators who can answer some of your questions regarding your application. However, they can’t offer legal advice, but if you have technical issues, they can lead you to the right path.
- Step 2: Ask A Trademark Lawyer For Help – Responding to trademark office actions can be confusing and complicated, especially when it comes to jargon one can’t easily understand. That’s why it’s essential to hire a trademark lawyer who can clear up all the confusion and process your response without any fuss.
- Step 3: File The Response – File your response through USPTO’s online site, the Trademark Electronic Application System (TEAS). Once your responses have been sent, your lawyer will file all the necessary documents to support your application.
After submitting your responses, all you need to do is wait for the USPTO’s response. If your responses didn’t suffice, the office would have no other option but to mark your application ‘Abandoned.’
2. Failure To Conduct Trademark Search Before The Registration
There are many reasons why USPTO may reject your trademark application. These include the following:
- Your mark is already circulating in commerce.
- Your mark is similar to another.
- Your mark has plenty of similar registered trademarks.
To prevent your application from being rejected due to the following reasons, you’ll need to conduct a trademark availability search before registration. This will help you identify other trademarks similar to yours, preventing delays and rejections.
Aside from that, conducting a trademark search can also help you avoid getting involved in infringement cases. Infringement means using other companies’ trademarks without permission. You could be liable to pay for the damages, which could cost thousands of dollars.
Here’s how to conduct a trademark search:
- Visit the Trademark Electronic Search System.
- Type your exact trademark in the search bar and click enter.
- Look for exact matches and take note of them.
- If there are no exact matches, enter similar trademarks in the search bar one at a time.
- Look for similar matches and take note of them.
If your trademark has a match, you have no choice but to change yours. After that, conduct another search until your trademark is unique and has no matched results.
3. Choosing The Wrong Category
Choosing the right category may seem easy, but actually, it isn’t. In fact, it’s one of the most challenging parts of the application process. This is the part where most applicants make tons of mistakes.
The USPTO’s filing system comprises 34 product categories and 11 service categories. What makes the process difficult is that each category has dozens of subcategories, and you must find the exact one that perfectly describes your product.
But why is getting the right category important? Choosing the wrong one may result in trademark rejection, and you have no option but to pay and apply again.
4. Failure To Have A Distinctive Trademark
If you want to get your application approved immediately, your trademark should be distinctive and specific to your business, not generic. These trademarks are easy to register and defend in the event of an infringement.
For example, a juice company registering a mark like ‘100% Pure Juice’ might fail because such words are prevalent and widely used by many companies in the industry. The same goes for marks with descriptive words, such as fresh, refreshing, cold, etc.
So, what’s a distinctive trademark should be like? Here are the three categories you might need to know:
- Suggestive Trademarks: These are marks that give people a hint about the product’s true nature without directly stating its main purpose. Some examples include Airbus, Netflix, and Jaguar.
- Fanciful Trademarks: These are marks made up of words that don’t really exist. In short, they’re a product of one’s creativity and artistic imagination. Some examples include Kodak, Exxon, Xerox, Clorox, and Fiverr.
- Arbitrary Trademarks: These are marks made up of real words unrelated to the product or service being registered. Some examples include Amazon (a name of a river for an eCommerce company), Shell (a sea-related object for a petroleum company), and Apple (a fruit for a technology company).
Applying for a trademark isn’t as easy as it seems. The process is quite confusing and complicated, leaving plenty of room for mistakes. These mistakes should be avoided to prevent costly delays and unwanted rejections. Keep in mind the insights mentioned above so you can register your trademark without any problem.