Top 5 Trademark Application Mistakes to Avoid - Daniel Ross & Associates

It can cost hundreds if not thousands of dollars to register a trademark. If you make a mistake on the application, it might be amendable, in which case you are lucky and it will only waste time. However, if it is an unamendable mistake, it will not only cost you time but also money because you will have to resubmit the entire application, and there are no fee refunds.

Save time, save money, and do it right the first time. Below are the 5 most common application mistakes applicants face during the trademark registration process and what can be done to avoid them.

1) Failing to Search Thoroughly for Conflicts.

If your trademark and a previously registered trademark, “are similar and the goods and/or services [are] related such that consumers would mistakenly believe they come from the same source,” then the USPTO will deny your trademark application during its trademark conflict search.

For this reason, the USPTO recommends a search of its trademark filing database for exact or similar trademarks that are applied for or that are already registered.” Always search before you file as the USPTO’s examining attorney only conducts their own search after you’ve filed and paid.

2) Selecting the Incorrect Class(es) of Goods/Services.

When registering your trademark, you must select the proper classifications from over 45 different classes of goods or services. Essentially, the classification is an announcement of what you will be selling with the trademark name attached.

If you do not select the proper goods or services initially, the goods or services you actually offer might be “outside the scope” of the application classification and you won’t be permitted to add them later.

3) Using a Generic Term as a Trademark.

A generic term may never be registered as a trademark. Generic terms are ones which, “are words or symbols that communicate what type of product or service is being offered.” So, for example, the term “Broom” being used as a mark on an actual broom cannot qualify as a trademark as the broom is the product itself and not the provider of the product.

4) Not Searching Translations of Non-English Words.

“Under the doctrine of foreign equivalents, a foreign word (from a language familiar to an appreciable segment of American consumers) and the English equivalent may be held to be confusingly similar.” In other words, you cannot use the word Atseełtsoi (the Navajo name for hawk) for shoes, if there is already the trademark Hawk in use or registered for shoes. The doctrine of foreign equivalents states that after translation, “Atseeltsoi” and “Hawk” are identical, and therefore have a high likelihood of confusion.
To avoid this, make sure to look for your trademark in different languages during your initial trademark search, before filing the application.

5) Inaccurate Contact Information.

It seems like common sense but, “an application must be filed by the party who is the owner of (or is entitled to use) the mark as of the application filing date.” If you put inaccurate contact information, especially the wrong owner name, then your application will be denied, or titled to an improper entity.
Adding your e-mail for correspondence with the USPTO is also very important to include as it allows the examining attorney to quickly contact you with questions, concerns, or to simply give you deadlines for important parts of the application process. Just make sure to double check the application paperwork before submission.

Conclusion

These are just some of the more common reasons for an application denial, but there are many more. If you need assistance filing or correcting your application, we’re happy to continue the conversation by phone, e-mail, or webform.


All the best,

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