Insufficient Trademark Search
One of the most common and costly mistakes is rushing to file a trademark application without conducting a comprehensive trademark search first. You don't want to waste time and money by trying to register a trademark that won't qualify. Instead, the best course of action is to figure out where you stand before applying.
Many business owners rely on simple keyword searches using the USPTO's free database, but this approach is risky. Basic searches often miss similar marks that could block your application. For example, if you want to register "BRIGHT IDEA" for consulting services, a basic search might not reveal existing marks like "BRITE IDEA" or "THE BRIGHT IDEA COMPANY" that could prevent your registration.
When your application gets rejected due to a similar existing mark, you lose your filing fees (which start at $250 per class) and face a difficult choice: abandon your branding or fight an uphill legal battle. Even worse, you may have already invested in business cards, signage, website development, and marketing materials featuring the problematic mark.
Conducting a proper search before filing helps you:
- Identify potential conflicts before investing in your brand
- Avoid the frustration of waiting months only to receive a rejection
- Save on legal fees that would be required to respond to USPTO refusals
- Make informed decisions about whether to proceed with a particular name
- Explore alternative names if needed while still in the planning phase
Remember, the most expensive trademark search is the one you don't do. A thorough search upfront is a small investment compared to the potential costs of rebranding later or defending against infringement claims from existing trademark owners.
Incorrect Goods and Services Classification
The USPTO requires applicants to identify the specific goods and services for which the mark will be used, classifying them into one or more of 45 international classes. Many applicants either make their descriptions too broad, too narrow, or select incorrect classes altogether.
Common classification errors include:
- Using vague or indefinite descriptions that the examiner will reject
- Claiming goods or services you don't actually offer yet
- Selecting incorrect international classes for your products or services
- Using class headings instead of specific descriptions of your offerings
These classification errors often result in office actions requiring clarification or amendment, causing delays of several months. Worse, if you claim goods or services you're not actually using in commerce at the time of filing a use-based application, it could invalidate your entire registration later.
Filing Descriptive or Generic Marks
Many applicants attempt to register marks that merely describe their products or services. Descriptive marks (those that directly describe a quality, feature, function, or characteristic of the goods/services) are difficult to register without proof of "acquired distinctiveness" through extensive use over time.
Examples of descriptive marks that would likely face rejection include "Cold Beer" for a brewery, "Speedy Delivery" for courier services, or "Organic Produce" for a grocery store. Similarly, generic terms (the common name for a product or service) cannot be registered at all – "Email" for email services or "Smartphone" for mobile devices would be refused registration.
Strong, registrable trademarks are typically arbitrary (common words used in an unrelated context, like "Apple" for computers), fanciful (invented words like "Xerox"), or suggestive (hinting at qualities without directly describing them, like "Netflix").
Failing to Monitor and Maintain Your Trademark
Getting your trademark registered is just the beginning. Many business owners make the mistake of thinking once they've received their registration certificate, their work is done. In reality, trademark protection requires ongoing monitoring and maintenance.
- Between years 5 and 6 after registration, you must file a Declaration of Use to maintain your registration
- Every 10 years, you need to renew your registration
- Missing these deadlines can result in cancellation of your registration
- You should actively monitor for potential infringement by others
Consider setting up reminders for these critical deadlines or working with a trademark professional who can help you track and maintain your registrations. The costs of renewal are far less than what you'd spend to start the registration process all over again.
One significant advantage of trademarks is that they can never expire if properly maintained. Unlike patents or copyrights that eventually enter the public domain, a trademark can protect your brand indefinitely as long as you continue using it in commerce and file the required maintenance documents. This potential for perpetual protection allows businesses to build lasting brand equity and consumer recognition over decades or even centuries, as demonstrated by long-standing brands like Coca-Cola and Ford.
Conclusion
Avoiding these common trademark mistakes can save you significant time, money, and frustration. The smartest approach is to invest in proper preparation before filing, including a comprehensive trademark search and guidance on classification and descriptiveness issues.
Comprehensive trademark search services provide crucial insights about potential conflicts and descriptiveness concerns that might affect your application. This proactive investment can prevent costly rejections and help you build a strong, legally protected brand from the start.