Many trademark registration problems are avoidable. Regardless, many Federal trademark registration applications that are denied by the US Patent and Trademark Office (USPTO).
Why is this?
The root of the problem is the number of discount website form filling services offering cheap trademark filing services. These website form-filling services just fill forms. Period. Their websites ask you a few questions, populate the USPTO trademark registration application form—and then auto-files for you.
What’s the problem with that?
The problem is the complete lack of legal guidance and legal advice and, therefore, a complete lack of actual quality control.
These discount websites are not law firms. They cannot provide legal advice. They cannot represent you in the defense of your application when the USPTO rejects it.
What do these discount website form-fillers do best? Take your money—without further comment.
This is unfortunate. A little “further comment” would help you to avoid some of the most avoidable trademark registration problems seen by the USPTO. Experienced Michigan trademark attorneys are licensed to provide you the “further comment” (i.e., legal advice) that you need to draft and file your Federal trademark registration application right the first time.
However, what are the most avoidable trademark registration problems?
This Article will discuss a few notable issues.
Your T-Shirt Design Is Not a Trademark
Trademark registration is different than copyright registration.
Copyright registration is appropriate for your creative work. Copyright registration will protect your painting, your interesting design, your poem, your novel, your collection of rap or punk rock songs—and more. It exists to ensure that, until your work slides into the public domain, only you have the right to profit from your creative work.
Likewise, patent law in the US exists to protect the invention, system, or design that you have engineered for the same purpose.
Trademark registration is different. Trademark registration exists to protect consumers’ right to know what they are buying and from whom. It exists to protect a business name, product name, slogan or other term or design used in association with the sale of a specific service or product being marketed in interstate commerce.
It protects your brand, in short.
A common trademark error is, therefore, the filing of a trademark registration for something that is not, in fact, a “mark” used “in trade.”
This is something that a Michigan trademark lawyer would clear up for you very quickly in an initial consultation. The $35 website you threw money at to mindlessly file your trademark registration form would not bother to do so.
You Aren’t the Owner of Your Trademark
Wait, what? You don’t own your trademark?
Listing the wrong owner of the mark on your trademark registration application is a common error. This can occur when the Michigan LLC or other entity actually uses the mark.
It is a basic requirement of Federal trademark registration that the mark in question be “used” in commerce. That is, the term or design must be displayed to the public in association with a good or service transacted or sold to consumers across state lines.
Thus, if your LLC conducts the business and displays the mark on its website or other advertising materials, it is the one using the mark in commerce—not you.
Remember that a corporation is a separate legal person under US law. If you file a US trademark registration application under your own name when your LLC is actually using it, that application will be rejected.
There are other such ownership issues that can similarly trip up a trademark registration application. Were you just kicked out of your band? And now you’re filing a trademark registration application for the band’s logo?
That’s a problem, if so.
Your Trademark Sucks
Does your company sell hammers in Detroit—and call itself the Detroit Hammer Company?
If so, your trademark sucks.
A mark must be unique enough to specifically identify you as the source of your product or service. Thus, a business name that merely describes the product being sold or your geographic location will not be registrable.
A trademark must also not conflict with a prior registered mark. If your proposed mark is overly simplistic or uses common English words, the odds that your trademark registration application will be rejected as likely to confuse consumers will be high.
Note that your application need only be likely to confuse—not certain to confuse. Thus, changing the name of your athletic shoe company from “Adidas” to “Bladidas” is not going to be helpful.
There are a number of other similar trademark selection problems that can be easily avoided with the guidance of a good trademark lawyer.
You Attached the Wrong Specimen
Recall that you must use your mark in interstate commerce in order to register it as a Federal trademark. This is true. Further, you’re going to have to prove that use to the USPTO to obtain your trademark’s registration.
Proof of use in commerce is provided by the attachment of a “Specimen” to your application. (In an intent-to-use application, the Specimen is attached to the “Statement of Use” filed later in the process.)
A number of rules apply to Specimens. In particular, it must specifically show the use in commerce as it relates to the actual services or products listed in the application.
Did you go crazy with your filing fees and file an application (without the help of a trademark attorney) with 19 different International Classes included—only 1 of which is supported by your Specimen?
If so, you committed a number of avoidable trademark registration errors.
You Didn’t Complete Your Application Properly
The most avoidable trademark registration problem is the failure to simply complete the application properly.
The USPTO TEAS form is not user-friendly. It is easy for the novice user to miss radio buttons, leave text fields incomplete, and to fail to complete the legal requirements of the trademark registration application.
Particular issues include:
- Failing to provide the consent of another person named in the prospective mark;
- Failing to provide accurate dates of first use;
- Failing to provide the English equivalent of foreign terms utilized in the mark;
- Failing to provide basic information regarding the name, address, email, and domicile of the applicant;
- And others.
Completing a trademark registration application properly is the least of the services that a competent Michigan trademark attorney will provide.
Avoidable Trademark Registration Problems: The Bottom Line
The bottom line is that avoidable trademark registration problems are exactly that—avoidable. The cost of trying to save money on attorney’s fees will be an application that is denied, delayed, or that does not provide the scope of brand protection your enterprise needs.
The registration of your trademark is the single most value-adding step that you can take when forming a business. Your brand is your business. And your brand has no value if it can be protected and enforced against infringers.
Thus, the #1 most avoidable trademark registration problem is failing to retain a Michigan trademark attorney to help you to protect your brand properly, the first time around.
Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting entrepreneurs, solopreneurs, artists, musicians, start-ups, and larger enterprises with robust intellectual property portfolios, and others in all industries with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.
We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.