As a business owner, you have worked hard to build your brand. So why wouldn’t you protect it? Many founders fail to take even the most basic steps to protect their legal rights of their branding. Here are the five of the most common trademark mistakes or misunderstandings I see business owners make:
1. Failure to Use the Mark “In Commerce”. A trademark can only be registered if the mark is being used “in commerce”. “In Commerce” means the mark is being is used in relation to the goods or services being provided to the public. A one-off sale to friends and family won’t cut it. If you have a name or logo you intend to use but are not using it in commerce yet; you can file an Intent-to-Use application to reserve the mark for a period of time before having to show proof of it being used in commerce or forced to abandon the application.
2. DIY (Do-It-Yourself) Trademark Applications. Business owners and entrepreneurs have that DIY attitude, which perfect for someone taking on the challenge of product development and business building. However, without the technical knowledge or experience with the United States Patent & Trademark Office (USPTO) it can be difficult to properly file a trademark application. Once an application is filed there is no going back or refunds, so it is important to get it right from the beginning.
The UNC School of Law conducted a study examining the differences in success rates for trademark applications being published by the USPTO by non-attorney and attorney filers. The study discovered that 82 percent of all applications submitted by attorneys received preliminary approval for registration, versus only 60 percent in comparison to the non-attorney filers. The researchers concluded that “These data suggest that the presence of a lawyer made a meaningful difference”.
3. Misunderstanding of the TM Symbol ™. Many people misunderstand that using the “TM” symbol does not mean you have a registered trademark. The “TM” symbol simply denotes that you have a “common law” trademark which means your trademark rights are limited to the immediate geographic boundaries within which your business operates.
If another company were to file and register the exact trademark you are using, that company would have priority to use the trademark because they were the first to file. Ultimately, they would hold the power to block your brand from expanding anywhere else in the country.
4. Trademark is Not Distinctive. Too many companies fall into the trap of their trademark not being distinctive. Companies that use generic terms or merely describe their products or services will likely be rejected by the USPTO. Companies should aim to choose more unique, arbitrary or fanciful words to set their brand apart from others.
5. Trademark Searches and Conflicting Marks. The USPTO strongly encourages applicants to perform a thorough search of its databases for any registrations that may conflict with your trademark. Trademark applications will be denied by the USPTO if it is deemed confusingly similar to an already registered mark. Trademark attorneys can save you money by performing a thorough search to guide you on how to get your mark registered and/or avoid serious consequences of infringement.
Here at Fargo Patent & Business Law, it is our mission to help innovative businesses protect their innovative ideas. Our expert intellectual property attorneys are ready to assist you in protecting your brand and enforcing your intellectual property rights.
