Yep, you read that right — for one reason or another, more than half of startup trademarks get rejected by the U.S. Patent and Trademark Office (or USPTO for short). If you're busy running your business, the last thing you'll want to do is spend time filing a trademark only to have it get rejected.
To help make sure that doesn't happen, we've outlined all the measures you can take to maximize your trademark's chances of being approved. Plus, seven of the most common trademark mistakes to avoid.
How to File a Trademark the Right Way
Whether you have a digital business, run your small business from home or are juggling multiple side hustles, there are plenty of scenarios in which you might want to file a trademark.
But how can you prevent your trademark from being rejected? These are the steps you'll need to take.
Determine If a Trademark Is Right for You
First things first — is it even worth your time filing for a trademark to begin with? To find out, you need to know what can and cannot be trademarked. For instance, things that can be trademarked include:
Phrases and slogans
Symbols and logos
Distinctive colors, shapes and sounds
Combinations of any of the above
On the other hand, things that cannot be trademarked include:
Generic words and phrases
Merely descriptive words and phrases.
Deceptively descriptive words and phrases
Primarily geographically descriptive words and phrases
Primarily geographically deceptively descriptive words and phrases
Merely a surname
If the property you want to trademark is described in the first list, filing a trademark could be right for you.
To make sure it is, study the USPTO's explanation of strong trademarks. The strongest are fanciful, arbitrary and/or suggestive, while the weakest are generic and/or descriptive.
Perform a U.S. Trademark Search
Before you begin filling out a trademark application, you'll need to make sure that no one else has already registered or applied for a similar property.
Create a new application for a new and improved mark.
The best option for you depends on the feedback you receive from your assigned examining attorney and any other representatives of the USPTO, so be sure to take that into consideration before choosing your course of action.
Maintain Your Trademark
Once the USPTO sends you a certificate of registration, a celebration is certainly in order. However, your work's not over yet — you'll still need to maintain your trademark by:
Continuing to use the trademark in commerce
Deleting any unused goods or services from your registration as needed
Filing maintenance documents on a regular basis, beginning between the fifth and sixth years after the registration date
As the sky-high number of rejected trademark applications shows, there are plenty of mistakes to be made in the trademark registration process. Here are seven of the most common that you should be sure to avoid.
1. Not Knowing How the Trademark Symbols Works
There are three symbols associated with trademarks:
In other words, using the TM symbol will not protect your trademark from infringement. So if you want to have exclusive use of your trademark, get it registered as soon as possible.
2. Failing to Do a Thorough Search
The USPTO's trademark database TESS is there for a reason: If you want your trademark application to be approved, then you need to make sure a similar trademark hasn't already been registered.
If you fail to conduct an adequately thorough search, you might end up waiting months only to have the USPTO tell you that your proposed trademark is too much like one that already exists.
You can get help avoiding this risk with Incfile's Trademark service. A thorough search will be performed for your trademark, and the entire process will be supported by a trademark attorney, including prepping and filing documents. With such a service, you can enjoy a greater chance of first-time approval (and a lot less stress).
3. Not Using the Property You're Trying to Trademark
It's important to realize that if you're applying for a trademark under a use in commerce basis (more on that below), the USPTO needs to see that you're actively using it to sell goods and services.
So be sure to do so, and don't try to register a trademark before using it (unless you file under an intent-to-use basis).
4. Choosing the Wrong Filing Basis
When applying for a trademark, you'll be able to choose from four different bases:
Use in commerce basis, if you are currently using your mark in commerce
Intent-to-use basis, if you genuinely intend to use the mark in commerce in the near future
Foreign registration basis, if you own a foreign registration of the same mark for the same goods or services
Foreign application basis, if you own a foreign application that was filed within six months of your U.S. application for the same mark and the same goods or services
To avoid a frustrating rejection, be sure to pick the basis that suits your situation.
5. Choosing the Wrong Trademark Class
There are actually many different classes of trademark — 45, to be exact. And if you put the wrong one on your trademark application, it could end up being rejected.
To prevent such an inconvenience, carefully study each class as listed by the USPTO to find the one that accurately describes your goods or services.
6. Failing to Promptly Respond to Your Assigned Examining Attorney
When your assigned examining attorney finds reasons for refusal in your trademark application, they'll send you a letter (known as an "office action") explaining the problem.
You'll then have a chance to correct the issue, but be sure to be quick about it: Once you're sent an office action, you or your attorney have six months to respond. Otherwise, your application will be deemed abandoned.
Tip: The USPTO has detailed information on how to respond to common types of office actions.
7. Neglecting to Maintain Your Trademark
While maintaining your registered trademark isn't necessarily difficult (you simply need to keep using it and remember to file a maintenance document every few years), it is absolutely crucial.
So, don't be tempted to write off your registration maintenance as something you'll deal with "later." Instead, plan for it now and set some reminders well in advance.
In the end, there's no denying that the trademark application process is long and complex. But if you take your time and do your research, your application doesn't have to be one of the 50 to 80 percent that are rejected.
And if you want some extra help to ensure that your trademark is unique and your application is airtight, Incfile's affordable trademark search and registration service is here for you. We'll provide legal counsel from an experienced trademark attorney, so you'll never have to wonder if you're on the right track.
Carrie Buchholz-Powers is a Colorado-based writer who’s been creating content since 2013. From digital marketing to ecommerce to land conservation, she has experience in a wide range of fields and loves learning about them all. Carrie is fond of history, animals and beauty in equal measure. In her free time, she enjoys knitting, playing video games and exploring Colorado's prairies and mountains with her husband.