Costly Trademark Mistakes Business Owners Make and How to Do It Right

Costly Trademark Mistakes Business Owners Make and How to Do It Right

woman applying for a trademark online

When starting your new business, you probably have a big checklist that might look something like this:

  • Save up your finances…check!
  • Research all about forming and running a business…check!
  • Establish your business entity type…check!
  • Find a location for your business offices…check!
  • Hire your first employees…check!

Is one of the next things on your list establishing a trademark for your business name? If it’s not, it should be.

Why Do I Need a Trademark?

The best way to protect yourself and your business is to trademark your business name. A trademark means having the legal ownership and protection rights over a design, logo, name, symbol or word. This gives you legal recourse if another business tries to use the same or a similar name. A trademark will also cover your products and services, thereby protecting you from counterfeit products as well.

What if you came up with a name and began marketing your business, only to find that someone else started using it to capitalize on your success? What if you picked a business name that was already trademarked by another company, and they filed a lawsuit over it? Both of these scenarios can impact your sales, cause brand confusion and take down your business. Trademarking your business name before forming your company is a smart move to ensure your brand will be yours for the long term.

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Trademark Mistakes to Avoid

While getting a trademark is not a difficult process, there are some common mistakes that many face when filling out their application, submitting materials and using the trademark properly. Here are some of the most common trademark mistakes to avoid.

1. Thinking the TM Symbol Will Protect You

If you are browsing the internet or even the packaging of the products you purchase, you may see the little TM symbol (™). While this may cause some to believe the brand has a trademark, that’s not exactly accurate.

Using the TM symbol is simply a “common law” trademark, and this is where there tends to be some confusion. It does not mean the United States Patent and Trademark Office (USPTO) has approved the use and protection of a name, tagline, logo or anything else needing protection. In fact, if you only use the TM symbol, you could lose your common law protection if someone were to register an official trademark, and you haven’t.

You can (and should) use the TM symbol once you file your application. Once you are approved to use your trademark by the USPTO, you need to begin using the ® symbol to show it’s an actual USPTO registered trademark.

2. Not Searching for the Trademark You Want to Apply For

You always want to do your due diligence and ensure what you are trying to trademark is not already in use or registered. This means you need to conduct a trademark search to see if any other businesses are using the logo or name that you would like to apply for.

The USPTO website has a Trademark Electronic Search System (TESS) where you can run a search of their current database to see if what you want to trademark is in use. If you are looking to trademark standard characters (words), the best option is the Basic Word Mark Search under the options listed. Either of the other two options listed would be better suited for if you are looking to trademark a logo or design.

Incfile also has a Trademark Name Search and Registration service. Our qualified attorneys can conduct a trademark search for you, help fill out your paperwork and get it submitted to the USPTO for consideration.

3. Failure to Use What You Want to Trademark in Commerce

A common trademark mistake is not actually using your trademark in commerce before you apply. The USPTO wants to see that you have been using the name or logo you want to trademark in order to sell your products or services. This can be something as simple as using it on a website where people can make a purchase.

For example, if you are trying to trademark the name "Trading Trademarks," you want to show the USPTO that you have a website URL using the name (www.tradingtrademarks.com), you have the name prominently displayed on your website and that the product or service you are selling is currently available. Simply stating that you want to trademark a name without showing proof that you are actually using it in commerce will not help you get your trademark approved. Should you neglect this part of the application, there is a high probability that your trademark application will come back rejected.

To add insult to injury, you’ll have to wait nearly three months or more just to get that determination before needing to go back to the drawing board and fix any errors or omissions on your application to resubmit.

a trademark application on a laptop screen

4. Choosing the Wrong Trademark Class on Your Application

This could be one of the most frustrating parts of completing a trademark application. There are many classes you can choose from when explaining to the USPTO how you will use your trademark. There are a total of 45 classes for you to choose from (34 designated for products and 11 designated for services). You want to be specific and accurate with your use, or the application will get rejected.

Furthermore, it’s not just choosing the correct class for your trademark, but also selecting from the laundry list of sub-classes. Choosing the correct class can mean the difference between protecting your rights to use the trademark and having someone else slide in the back door due to your mistake, and it can cost you dearly in the end.

Additionally, you may want to register your product or services under multiple classes (all having their own separate filing fee attached to them).

The USPTO has a Classification Resource that helps explain what each is so you can better understand where your product or services needs to be.

5. Not Actively Protecting Your Trademark

Once your trademark application is approved, that doesn’t mean you can sit back. Now you have to police and enforce your own trademark to prevent people from using your name, logo or product ideas. It may be a good idea to have a good lawyer who can handle any infringements to your trademark.

You can also set up a Google Alert for your trademark name. All you do is sign into your Google account, go to the alerts page and then type in what you want Google to alert you on. A logo tends to be difficult for setting alerts, but if you have a standard character or name trademark, put that in the system to have it searched daily.

Google will automatically send you an email with a link to the source if it finds anything related to your alert. From there, you can contact the owner of the website or business (or have your attorney do so) and provide them with a cease and desist. Generally, that is enough to have the person or business stop, but you may have cases where people want to play hardball and you may need to take legal action.

How to Get a Name Trademarked

Trademarking a business can become time-consuming and complicated since you may spend a considerable chunk of your time researching whether your potential business name is taken or not. That requires a lot of digging and fact-checking, which you may not have the time to do on your own if you’re focusing on other aspects of starting your new business.

Here are some of the step it takes to get a trademark:

  1. Do the research and ensure your potential business name isn’t already taken and trademarked.
  2. If it is taken, go back to brainstorming a new business name.
  3. If it is not taken, file for a trademark, which involves providing your filing "basis," a description or drawing of your trademark, a list of goods and services your trademark will be used with, the proper classification, a verified statement or declaration and the required trademark fee.
  4. Receive legal advice throughout the process to ensure you file correctly.
  5. Check that your trademark filing is accepted by the government office.
  6. Once approved, begin using your business name.

After filing for trademark rights, they are typically good for 7 to 20 years and are renewable indefinitely. Trademarks are protected worldwide by international and intellectual property treaties. This means you are protected wherever and whenever you operate, as long as you keep up to date on the paperwork and file correctly, to begin with.

Need Assistance with Your Business Trademark?

As you can see, establishing a trademark can be a complex process. The good news is that there are plenty of resources to help you, such as Incfile’s Trademark Name Search. This service includes:

  • Consultation with a trademark specialist
  • A thorough search of existing trademarks
  • Information about the benefits of filing a trademark
  • Legal counsel from a trademark attorney
  • Handling of all correspondence with the USPTO until the name is approved

All you have to do is tell your Incfile representative what you need, and your personal trademark attorney will explain the process, conduct a trademark search, provide a plan of action, file for your trademark and deliver the approved documentation. This assistance can be vital to ensuring your trademark gets filed quickly and correctly. Find out more about how our service can help you avoid trademark mistakes and get it done right.

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