The following is an edited transcript of my video The 5 Most Common Trademark Application Mistakes and How to Fix Them
In addition to filing many, many trademark applications on our own here at Erik Pelton & Associates for our clients, we also frequently get calls from other applicants who filed on their own, or other attorneys who aren’t trademark experts who filed and need assistance. Throughout the years in reviewing these applications and reviewing a plethora of all different types of applications, I have noticed the most common mistakes that applicants make, and I want to talk about five of those most common mistakes and how to fix them.
- The first and foremost mistake made by many trademark applicants is not properly searching before filing. You can see, I have a lot more content about searching specifically in more detail, but we’re talking not only about searching the USPTO’s database for possible conflicts, but also searching more widely with a comprehensive search. Because the potential for conflicts is a significant factor in the strategy of whether to file and how to file the trademark application. The way to fix this is to ensure that a thorough search is done before a trademark application is filed.
- A second common mistake that we often see is those who dilly-dally or wait before they’re filing. They might think about filing, and then hold off for some reason. The longer you wait, the more exposure you have as a brand owner or as someone launching a new brand. Because in the interim, if someone else files something that could be confusingly similar, it is likely to cause problems, delays, expenses, or refusals, or some combination of all those things. This is also a relatively easy fix: file as early as possible. Applicants can file based on intent to use the trademark before they’re actually launched and using it in commerce. Once they’re using it in commerce, they can and should file as soon as possible in nearly all circumstances.
- A third common error that I see over and over again is not fully understanding what use in commerce is and what the requirements are for that. As I mentioned, it’s possible to file an application based on bona fide intent to use. So, use in commerce isn’t required at the outset, but it is required in order to complete an application no matter what, with some exceptions for foreign filings that I’m not going to get into now. A detailed understanding of what use in commerce is, what type of sales qualify for use in commerce, and what type of evidence is acceptable to demonstrate use in commerce is a series of highly specialized–and sometimes complicated–questions. So the fix here is to make sure that you review and understand what it means to be using a trademark in commerce, what type of evidence is acceptable, the link between the goods or services in the application, and the use and the evidence.
- The fourth mistake that we often see relates to the description of goods and services. I just mentioned that the use has to be tied to that description of goods and services. Having a proper and thorough and useful description of goods and services is important. An application might be approved, but if the goods and services description is wrong, such that no evidence of use will be available, the application is no good. Or if crafting the goods and services description differently could lower the risk of a conflict or an issue with the application, that is an important strategic factor to go into drafting and prosecuting the application. The fix here is to make sure that you put thought into the goods and services, and how broad or how narrow or how many classes are chosen to go into the application.
- Finally, the fifth very common mistake that I often see actually relates to all four of the others. It’s probably no big surprise that I’m going to tell you that filing without an attorney, without a knowledgeable, experienced guide to help through the trademark application process leads to more problems and leads to a lower rate of success in the application. I just mentioned four issues that are complicated that applicants need to be aware of. There are many, many others as well. Those are just four big, very common ones. Working with experienced council is the solution to this problem, and to many of the particular problems that can come up in an application. Of course, no attorney can guarantee the success. There are so many factors and each case is unique, but I can pretty much guarantee that working with an experienced attorney will lead to a better chance of success than the alternative.
