Mistakes to avoid before applying for trademark registration

Mistakes to avoid before applying for trademark registration

Are you starting a firm and being stressed about high legal fees? Many businessmen choose not to pay legal fees as it is costly at the initial stage of managing the firm with all its setups, so when deciding whether to spend money on trademark/ brand protection or business expansion, the latter usually wins.

As an outcome, several businesses file trademark applications with the US Patent and Trademark Office without first consulting legal assistance. The businesses that manage the trademark application and maintenance process on their own sometimes encounter problems. But there are certain ways to avoid these problems and do it smartly and successfully.

Here we have enlisted things for you to consider before applying for trademark registration:

1- Security Clearance Negligence:

The first step in choosing a brand to register is for the owner of the new business to conduct thorough research when coming up with a name for the brand to see if it’s available to use and look for other third parties that might have the same or identical name for their brand that might also provide the same comparable services.

It will save the owner a lot of time and expenses and steer them away from facing a trademark infringement from the third party that already has the mark for their brand.

2- Undermining the process of applying:

The process of applying for a trademark application is not as easy as it looks, especially for business owners that are not that familiar with the forms, which can lead to making extreme errors that end up with refusing the application altogether.

Technical mistakes can be the following:

  • Misunderstanding the level of “use” necessary to maintain a use-based application.
  • Not getting when to apply based on “intent-to-use”.
  • Requesting for trademark registration in the improper class.
  • Submitting an incorrect specimen.
  • Not knowing if a mark can register as a trademark.
  • Not providing a solid description for products or services.
  • Not able to rightly select the specification of goods/services
  • Not able to protect the different elements of the trademarks such as labelling/packaging/trade dress/word mark/ logo mark/composite mark/word mark/tag line/ symbols etc.

3- Failing to respond to an Office Action by the deadline:

The Examining Attorney will issue an Office Action requiring a response if there is a problem with the application, no matter how minor. If business owners do not respond within a reasonable amount of time, their application will be considered dropped. 

The Examining Attorney may ask to alter a descriptive word or that the goods or services listed in the application be adjusted to be more explicit; if the matter made in an office action is small. However, sometimes, a big issue arises that necessitates a comprehensive legal response.

To avoid the application from being dropped, a response must be provided within six months of the mailing date of the Office Action, regardless of how big the issue is or pursued. Business owners who file applications on their own frequently fail to check their applications, resulting in the loss of their investment and priority date. Further, without the interference of a IP legal professional/lawyers, the business owners may not be able to file an efficient response in reply to the objection/office action.

4- Continous monitoring of the third party 

 A trademark aims to identify a single source of products or services sold under a brand, preventing consumer confusion. Thus it requires its owner to keep monitoring its use. The brand will become devalued if a trademark owner does not manage the mark to guarantee that third parties are not using the same or a nearly identical trademark. 

Are you encountering any of these mistakes? Let us hear your problems, protect your ideas and offer your brand a safe hand with our first-rated, cost-effective and time-efficient services.

Related Post