Top 5 Trademark Mistakes
Filing a trademark might seem straightforward, but the process is riddled with potential pitfalls. In fact, 80% of DIY trademark applications are rejected! To help you avoid common errors that can jeopardize your rights—or even your entire trademark application—we’ve outlined the top five trademark mistakes.
Keep these in mind as you navigate the trademark process, and remember: working with an experienced attorney can make all the difference.
1. Choosing a Trademark That’s Too Descriptive
Not all names or phrases can be trademarked. The USPTO requires trademarks to distinguish a specific brand, meaning overly descriptive names won’t qualify.
For instance, a name like “PHONE FIXED IN 24 HOURS” for a phone repair business would likely be rejected—it describes any 24-hour phone repair service. In contrast, a distinctive name like “WHAMO! 24 HOUR PHONE REPAIR” could work, as “WHAMO!” is unique and identifies a specific brand.
2. Using a Shirt Design as Proof for Clothing Trademarks
Clothing trademarks are common, but they come with unique requirements. Submitting a photo of your logo on the front of a shirt as a “specimen of use” will result in rejection because the USPTO views such use as “merely ornamental.”
Instead, submit photos of the trademark on tags (e.g., hang tags or neck tags) to demonstrate proper use for trademark purposes.
3. Filing the Trademark in the Wrong Name
If your business is using the trademark, don’t file it under your personal name. Trademarks filed in the owner’s name—when actually used by a corporation or LLC—are void from the start.
This mistake is particularly risky because it’s often undetected during the USPTO examination process. However, if the trademark is ever challenged, the error can render it unenforceable. Always ensure the trademark is filed under the correct legal entity.
4. Using Marketing Jargon in the Goods/Services Description
When describing your goods or services in the trademark application, avoid vague or marketing-heavy language. Terms like “turn-key solutions” or “next-generation technology” might sound compelling in an ad, but they’re too vague for the USPTO and will lead to rejection.
Instead, be clear and precise. For example:
- Say “downloadable software” instead of “turn-key solution.”
5. Claiming Use for Items You’re Not Selling
Filing a trademark requires you to identify the goods and services your trademark covers. While the USPTO only requires a specimen for one item per class, falsely claiming items you don’t sell is illegal and could invalidate your trademark.
For example, if you sell computer modems but also list flashlights (both under Class 009), you’re filing fraudulently unless you actually sell flashlights. Such misrepresentation leaves your trademark vulnerable to cancellation by third parties.
Avoid Costly Mistakes
Trademarks are critical assets, but filing them incorrectly can lead to unnecessary risks and expenses. Avoid these common errors by working with an experienced trademark attorney who can guide you through the process.
At Leonov Trademark Law, we specialize in helping businesses secure and protect their trademarks properly from the start. Contact us today to ensure your trademark is filed correctly and safeguarded for the future.