Formally registering your business’s trademark or service mark with the U.S. Patent and Trademark Office is often the first step toward securing your company’s most valuable asset and, eventually, growing your enterprise. After much consideration and due diligence, you have decided to submit an application for trademark protection. To help you prepare for success with your application, we would like to point out four issues that often cause trouble for trademark applicants.
1. Likelihood of Confusion (grounds for refusal). There are more than a few reasons why the examiner for the USPTO might refuse a trademark application, and likelihood of confusion is a common reason. The strength of trademarks and service marks come from the distinctiveness of the identifying mark; that is, others cannot copy registered marks. However, marks will not just get refused because it is identical to an existing mark. If the USPTO representative determines that the average consumer is likely to confuse your company’s products or services with another company due to an existing trademark, then you will be unsuccessful in your application.
2. Listing the incorrect trademark class on your application. In all, there are 45 different classifications for registered marks — 11 for service marks and 34 for trademarks. You must make sure that you identify which class your proposed mark belongs to. Sometimes it is obvious which class your mark belongs to based on your company’s products or services it identifies, but it can get confusing. For example, a trademark that is to be placed on a shirt with a collar is actually in a different class than if the shirt did not have buttons or a collar. To learn more about each classification, visit this page on the USPTO’s website.
3. Specimen refusal. Similar to a prototype or model, a specimen (some kind of sensory evidence, like photographs) must be submitted to the USPTO to help confirm that your proposed mark lines up with the information you provided in your application. There are several requirements your specimen must meet, and applicants frequently do not fulfill each one with respect to trademark specimens.
4. Registering intellectual property under the wrong entity. This pitfall is not directly connected with an application refusal, but it is an error that can cause major problems for business owners. Depending on the structure of your business, you might want to designate either yourself or your business entity as the owner of your trademarks. Think about your long-term business goals when making a decision on this important issue. The issue can also come into play if you are ever sued or want to sue for trademark infringement or dilution.
Conclusion
To be clear, it is not required by law to use an attorney when applying for trademark protection. However, you have a much greater chance of success if you receive legal counsel from an experienced and knowledgeable intellectual property attorney. Doing things correctly the first time is always less expensive and more efficient than having to redo a trademark application. To find out how Lockhart IP can help, get in touch with us through our website here.