The United States Patent and Trademark Office (USPTO) takes trademark laws very seriously. It may reject your application for something that to you seems negligible, like the wrong use of a single word.
Because of the potential hangups in the system, most people choose the smart approach of working with a trademark attorney. If, however, you decide that you would rather handle your own trademark application, you should guard against these seven common mistakes.
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1. Don’t make the trademark too similar
One of the most common reasons for trademark denials is that a mark appears “confusingly similar” to another registered mark. If the USPTO feels that consumers could confuse your mark for an existing one, they could reject your application.
Generally, when evaluating a mark for similarities, the USPTO considers not only the similarity of the mark to other marks, but also the similarity of the goods and services connected to the mark.
For instance, in the early 1970s, two major companies shared the Apple mark: Apple Computers and Apple Records. But because the companies offered different products and services, they were allowed to coexist with the same mark under a joint agreement.
2. Pick the right owner
Each trademark has a specific owner. Make sure that the application correctly states who owns the trademark rights.
In corporate trademark applications, most applicants list the company or corporate entity as the owner of the trademark rights. There is nothing wrong with this approach. As long as the company is legally formed and registered, everything should proceed smoothly. Otherwise, an attorney could legally argue that, at the time of the registration, the rights were issued to a non-existent party, making your claims groundless.
Make sure the date of your application is set after the company’s incorporation date. Alternatively, consider listing a different party as the owner.
3. Don’t ignore Office Actions
At some point during the registration process, the USPTO may return an application on some technicality. They may issue an Office Action, which is a letter explaining the problems or issues with your trademark application.
When this happens, be sure to reply as soon as you can. Applications left unattended for six months after issuance of an Office Action are subject to abandonment or cancellation.
Most people get discouraged by the legal jargon used in an Office Action. But the correct response is often easier than it seems. The solution might be simply changing a word in your description. If you’ve received an Office Action and you’re not sure how to proceed, consult with a trademark attorney.
4. Know when to file an “intent to use” application
You can file different types of applications depending on how and where you will use the mark. If you wish to file for a federal trademark, but you have not yet started providing your products or services in the marketplace, you can consider filing an “intent to use” application.
Filing this type of application protects your mark for a set period, giving you time to build the scope of your company in anticipation of a federal mark registration.
5. Accurately describe your goods or services
The trademark application contains a section where companies describe their goods or services. Before you submit your application, read your description to make sure that you have not accidentally entered the wrong information. You’ll risk getting the rights to your trademark revoked if it is discovered that your description contained false or inaccurate information.
To make the online application process easier, the USPTO offers a list of pre-approved descriptions for goods and services. Just be sure to choose the right fit for your company. If you are running a restaurant, don’t accidentally select “construction services.”
Sometimes, the pre-approved descriptions may not fit with your company, in which case you will need to write out the description on your own.
6. Avoid using the words “include” or “including”
When describing your company, or its products or services, avoid using vague or open-ended words like “including”. Your description should be as clear and descriptive as possible. Saying your business “offers XYZ services, including…” is almost a sure guarantee that your application will encounter an Office Action requiring an amendment to the description of goods and services.
Instead, be specific about what it is that your company does. A better description would read, “XYZ services, namely…” and then go on to list the specifics.
7. Avoid descriptive and generic terms
Trademarks are grouped into five major categories: fanciful, arbitrary, suggestive, descriptive, and generic. The last two (descriptive and generic) are poor choices for a trademark.
You’ll do best to avoid using common words, or words that merely describe the products or services your company offers. For example, a car wash named Super Clean Car Wash would find difficulty in the registration process. Choosing generic words increases the risk of your mark being challenged or rejected by the USPTO.
On the other hand, fanciful, arbitrary, and suggestive trademarks fly though the screening process a lot more easily. Words like Xerox, Microsoft, and Coca-Cola did not exist until their companies created them. If you’re going to choose a word already in existence, pick one that is not related to the services or products offered by your company, like Apple did for its computers.
The third option is to pick a word or phrase that does not directly describe the services of the company, but suggests the qualities that can be found. For instance, “Greyhound Bus” instantly suggests the idea of a speedy and efficient transportation system.
Using these tips, you can be better prepared when you file your trademark application. Avoid the easy mistakes, and contact a trademark attorney if you ever find yourself lost or confused.
Bring in a Professional
The simplest way to make sure the trademark registration process is handled without mistakes is to get the help of a professional trademark attorney.