The Struggles of Trademark Application

Article Placeholder Image
By Christopher Coble, Esq. on February 10, 2016 2:57 PM

We're big advocates of registering your trademarks -- it's a relatively painless process that can protect your intellectual property from infringement. We say "relatively painless" because, unlike the trademark for Havana Club rum, most trademark applications don't take 21 years to be processed.

One way to avoid having your trademark application sit around for two decades is to stay out of the kind of litigation Havana Club got involved in. Here are a few others:

Know What to Do

There are four things you should absolutely know before beginning the trademark application process:

  1. Whether you should file for federal trademark protection;
  2. How to register a trademark with the U.S. Patent and Trademark Office;
  3. What you must include in a trademark application; and
  4. What happens after you file your application.

While trademark registration is generally a good idea, there may be cases where you've already secured trademark protection by using your mark. And any small business owner should know the entirety of the application process before embarking.

Know What Not to Do

It's not enough to know how to help your trademark application -- you should also know how to hurt it, and avoid doing so. Here are six common trademark mistakes:

  1. Failing to properly search existing trademarks;
  2. Thinking that because you coined a phrase or name you own a trademark;
  3. Thinking that putting a "TM" next to your trademark is enough;
  4. Choosing a trademark that describes your product;
  5. Thinking that your trademark covers all goods and services; and
  6. Applying to register a trademark covering a laundry list of goods and services.

The USPTO is very particular about what can be trademarked and what cannot. So make sure your mark is original, that's it's not overly broad or vague, that your application is sufficiently specific, and that it covers all the intended uses for your mark.

Know Who to Call

The best way to avoid the common pitfalls of trademark applications is to have an experienced intellectual property lawyer guide you through the process. You can find one in our directory.

Follow FindLaw for Consumers on Google+.

Related Resources: