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Missing the “Mark”: Top 7 Trademark Mistakes People Make

If you’ve never been involved in the process of registering a trademark and protecting the valuable ideas and brand names of your business, it is very easy to make mistakes. Trademark registrations are actually quite complicated and counterintuitive at times. There are several steps, procedures and maintenance requirements that must be followed or your brands may be in jeopardy of infringement or cancellation proceedings. If you aren’t very careful, you can severely jeopardize all of your hard work, creativity and potentially thousands or millions of dollars in value to your company.

Here is a list of the top seven trademark mistakes people make.

Trademark Mistake #1: Choosing a Generic Mark.

The primary purpose of trademarks is to prevent consumer confusion. Trademark law was created to protect marks from competitors that may create similar or infringing names. Marks should be unique and not descriptive of the particular product. For example, a soda company would not be allowed to register a trademark for a soda with the mark “Soda Pop”. This is far too descriptive and generic of the actual product.

Trademark Mistake #2:Not Being Able to Show Use of Your Mark.

Part of the application process for a trademark is proving use of the mark in commerce, i.e. available for purchase or use by consumers. By showing the USPTO that the mark is in use on a website, product label, product image or brochure, and by several other means is required before the USPTO will issue you full registration of that mark.

Trademark Mistake #3:Failing to Do Your Research.

Before you decide to use or register your mark, it is imperative that you have an attorney conduct a clearance search for you to ensure nobody else is using or has registered the same or similar mark in your class of goods. This is a good way to get slapped with a cease and desist letter and face potential damages for infringement. Not to mention the waste of time, effort and marketing dollars getting your company or brand off the ground.

Trademark Mistake #4: Not Displaying Your Registered Trademark Symbol Properly.

Prior to getting approval for your trademark registration, you may use the symbols “TM” (or “SM”) to put the world on notice of your common law trademark rights in that mark for the goods or services provided. Once your mark has received full registration from the USPTO, and not before, are you authorized to use the federal trademark registration symbol, the circle “R” (®). It is important that once you have your mark approved that you properly display the ® everywhere your mark appears.

Trademark Mistake #5: Failing to Monitor (and Protect) Your Trademark from Infringement.

Just because you have your mark registered, it doesn’t mean that others will abide and respect the laws protecting your mark. Often times, there is unintentional (and intentional) infringement against your mark. Whether the infringement is deliberate or not, it is important that you, as the trademark owner, protect your mark from any infringement. If you don’t, your mark may be in jeopardy of a cancellation proceeding by a competitor, subjecting your business to an incredible and unnecessary loss.

Trademark Mistake #6: Forgetting to Renew Your Trademark.

Trademark registrations are not a “one and done” process. Trademark registrations must be regularly affirmed and renewed.. For example, a new trademark owner must file an Affidavit of Use between the fifth and sixth year following the registration and another renewal filing within the year before the end of the ten-year period after the date of registration. A renewal application must also be filed within the year before the end of each successive ten-year period following the date of registration. If you forget any of the requirements as set by the USPTO for managing your trademarks, you may lose your trademark registration.

Trademark Mistake #7: Not Hiring a Qualified Trademark Attorney.

Last, but certainly not least, another mistake that people commonly make is not hiring a qualified trademark attorney to assist in the trademark application process, and to help protect, monitor and renew the mark. If your business is not in the business of applying for and monitoring trademarks, then you are subjecting yourself to potentially catastrophic losses. Why not leave it to licensed legal professionals that have experience and expertise in this area? Hire a trademark attorney to take care of your trademark needs so you can spend your time focusing on your core competencies within your business.

Knowing these some of the most common mistakes will, hopefully, help you avoid making them in the future. One final bonus trademark mistake that people make is simply not registering their marks in the first place. This can really cost you (and your business) a great deal of money. So, be sure to take the necessary steps to properly file, protect, maintain and renew your trademark registration. Contact WINTER LLP to service your trademark, copyright and corporate needs.


This post is brought to you the good folks at WINTER LLP, servicing the trademark, copyright and corporate needs of clients throughout Orange County, Los Angeles, San Francisco and Phoenix. Contact us at 1-855-FILE-TMS or through our website to file your trademark, copyright, corporation or LLC today.

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