Learn from the Biggest Trademark Mistakes
I have some good news. Most trademark mistakes are avoidable. By knowing certain insights and taking precautionary measures upfront, you will enjoy a greater probability of registering trademark. Let’s dive into the most common trademark blunders.
Need to register your trademark? Contact US patent and trademark attorney Vic Lin at vlin@icaplaw.com to see how we can use our 83% allowance rate to help you register your trademarks.
Applying for Very Descriptive Words
This common rejection has nothing to do with the similarity of your mark to other registered trademarks. This refusal occurs when the USPTO examining attorney believes your mark contains words that describe a characteristic of the goods or services identified in your trademark application.
Known as a merely descriptive refusal under Section 2(e), this is one of the most common trademark rejections. An easy way to reduce the risk of a merely descriptive rejection is to choose a trademark having distinctive terms.
For example, you can make up your own word. These are called fanciful marks.
You can also choose a word that has nothing to do with your product. Think of Target for retail stores or Apple for electronic devices. These are known as arbitrary marks.
Personally, I like suggestive marks that give you some hint of the product without telling you what it is.
What if you really like a trademark that includes descriptive words? A more experienced trademark attorney can hopefully provide you with some preliminary thoughts on the risks of a particular mark that you wish to apply for.
Applying Without First Doing a Trademark Search
The more common a word, the higher the risk that your trademark application will be rejected for being too similar to other trademark filings. Known as a likelihood of confusion refusal, this rejection also ranks at the top of the list.
To reduce this risk, consider a knockout search before applying.
Applying for Inspirational or Informational Phrases
It’s common for folks to take advantage of popular phrases or slogans gaining in notoriety. For example, phrases such as “HAVE A GREAT DAY” or “I LOVE YOU” will have a very difficult time getting registered, regardless of the goods or services.
Here are examples of failure-to-function trademarks that you may want to avoid applying for. The next time a popular movement arises, you may want to think twice about applying for the next catchy phrase.
Arguing Against Final Trademark Rejections in Final Office Actions
The chances of success in appealing a final trademark refusal are slim to say the least. Ballpark estimates of a successful appeal of a likelihood of confusion refusal are about 10% or less.
Such grim statistics offer some helpful takeaways:
- Your arguments in response to the first non-final Office Action will be critical. In most cases, you will get one shot to make your best arguments. You cannot, therefore, afford to take shortcuts or opt for cheap, inadequate arguments.
- You may need to consider strategies beyond arguing against the refusal. Sometimes, the most cost-effective approaches may involve dealing with the blocking registrations instead of arguing with USPTO trademark examining attorneys. For example, you might consider a partial cancellation against a blocking registration if only certain goods or services are cited.
Waiting to File Trademark Applications
Delaying your trademark application can have terrible consequences. We are not just talking about rejections. In some cases, suspension of your trademark application might be worse than a rejection.
Suspensions may occur when the USPTO trademark examining attorney finds a pending trademark application for a similar mark that was filed before your filing date. Since this earlier-filed trademark application has not matured into a registration, the USPTO examining attorney cannot yet use the third party’s trademark to reject your application.
As a result, your application will be suspended indefinitely until the earlier-filed application is either abandoned or registered. Unfortunately, waiting for that outcome can take years.
This potential years-long wait is arguably worse than a rejection. With a trademark rejection, you can at least move forward with arguments or a different strategy. When your trademark application is suspended, your mark could be in limbo for years.
Want to avoid trademark mistakes?
When you are dealing with obtaining IP rights, recognize that there is usually a tradeoff between time and money. You can choose to save money by investing your own time in learning about registering trademarks. Some folks have been successful in registering several marks on their own, so it can certainly be done.
If you are not very familiar with registering trademarks, then the money saved in trying cheaper approaches could result in a much longer process. In some cases, the money spent upfront will be wasted as you deal with rejections or delays that could have been avoided.
To avoid costly trademark mistakes, you will need to spend the time getting familiar with the process or spend the money to engage an experienced trademark attorney.
