As we discussed in our previous post, 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, no fee refund.
Save time, save money, and do it right the first time. Below are the 5 more common application pitfalls applicants face during the trademark registration process and what can be done to avoid them.
1) Failure to Monitor Status.
Some trademark applications require a specimen or other paperwork to be filed by a certain deadline. For example, the USPTO trademark examiner may issue an office action – a letter explaining problems or issues with an application – that often requires a response.
If you fail to respond to an office action within 6 months the application can be considered canceled or abandoned and will need to be revived or refiled, costing you time and money.
2) Waiting to Use the Trademark.
Actual use of a mark in commerce, while sometimes limited in a geographical area, still creates a priority over others in trademarks. Actual ownership over a mark starts with the first to use, not the first to file an application. In other words, it may be a good idea to start using your trademark on your product or service advertisement as soon as you can, then register the mark soon after.
3) Surname, No Consent.
If your trademark includes the name, portrait, or signature of a living individual and you do not have their written consent to use and register their likeness, registration of your trademark will be refused. Simply get written consent and file it with your application. Otherwise, you risk a denial. If the trademark identifies you (the owner) you still need to file an affidavit of consent. And remember: this rule also applies to pseudonyms and stage names.
4) Bad Specimen.
Some applications require a specimen of use and if the specimen does not, “show how you actually use your trademark in commerce on or in connection with the goods, or in the sale or advertising of the services, the application will be denied.”
For example: showing the trademark as a design on a t-shirt, but not showing the trademark used to sell or advertise the t-shirt (this is called “merely ornamental use”). In short, you need to show your mark being used as a brand to sell your product or service, not just as part of the product itself.
5) Deceptively Misdescriptive and Merely Descriptive.
A trademark can’t deceive the public by giving a description unrelated to the product or service, which is “deceptively misdescriptive.” A trademark is deceptively misdescriptive if “(1) the mark misdescribes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services; and (2) the misrepresentation conveyed by the mark is plausible.” So, for example, Oakwood for a furniture company that only makes furniture out of pine wood is “deceptively misdescriptive.” This type of trademark will be denied.
A trademark will be denied if it merely describes the product or service offered, which is “merely descriptive.” A trademark is merely descriptive if, “it immediately describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.”
An example would be Puffy for cotton balls or Crunch for a hard cereal bar. There are exceptions, like “secondary meaning” and “acquired distinctiveness,” but as a general rule of thumb you should avoid using merely descriptive marks.
If you haven’t read our first article in this series, check it out. Avoiding these top ten trademark application mistakes will put you in a good position for registration. 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,