Many believe that Federal trademarks are a DIY project and make the mistake of filing their own applications or worse using a self-directed filing service. This can be a costly mistake because it’s really easy to make a filing mistake that you cannot fix later.
The reason: Federal trademarking is a complex Federal legal matter that involves making dozens of legal decisions and judgment calls – many of which are interrelated. Plus, the U.S. Patent and Trademark Office has too many rules to count.
Consequently, there are literally hundreds of ways your DIY Federal trademark application might be rejected. Nonetheless, self-filed applications are easy to spot because they share many of the same mistakes.
Here are some of the most common traps for DIY Federal trademark applications:
1. You identified the incorrect applicant/owner. You are required to apply in the name of the owner of the trademark. Legally, the owner is the person or entity (e.g., corporation, partnership, LLC) who will be using the mark. Many DIYers make the fatal mistake of using their name, their DBA, or the company owner’s name – instead of the company’s legal name.
2. You ask for too little protection. Your trademark application needlessly includes (1) unregistrable elements; (2) articles such as “the,” and (3) claims to color. All of these extra elements narrow the scope of a Federal trademark.
Relatedly, you include an overly narrow listing of products and/or services in your application.
3. Your mark is too close to another Federal trademark. Your trademark is too close to another Federal trademark. Beware: the USPTO measures similarity based on sight, sound, and meaning, as well as any similarity of products or services. So, “Bob’s Burgers” may be too close to both “Robert’s Fast Food” and “Burgers by Bob”, for example.
4. Someone else has already registered the trademark. The USPTO won’t register your mark if someone else has already registered it.
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5. You picked the wrong filing basis. Your trademark application indicates that you are using your trademark, but you either (1) submitted unacceptable/insufficient “specimens” of use; or (2) you only have an “intent” to use your mark for the products or services listed in your application.
6. Your trademark is “merely descriptive.” Brand names that describe a function, a feature, or a characteristic of products or services are rarely registrable. This is the most common rejection made at the USPTO. Too many DIYers don’t understand that the listings of products and services in their applications contribute to this problem but can also avoid/overcome this problem.
7. Overpayment of Government filing fees. You paid all of the USPTO filing fees up front, even for products or services that have no hope of being approved for reasons 1-6 above. The USPTO filing fees are not refundable and can add up quickly. An experienced trademark attorney can help you minimize your risk of overpayment.
Applying to protect your trademark is just not a DIY project. If you file your trademark application yourself, you’ll probably do it wrong. In addition, you’ll be more likely to secure only partial protection and overpay the official fees.
So, do yourself and your business a favor. Hire an experienced trademark attorney. You’ll maximize your chances of success, minimize the risk of overpaying the Government for your trademark, and save yourself time and worry.
Because your brand is worth it.
For more than twenty years, Michael Kondoudis has been the go-to trademarking expert for businesses of all shapes and sizes. Michael is a USPTO-licensed trademark and patent attorney, educator, speaker, and author of the Amazon best-seller: Going From Business Owner to Brand Owner. He is also an authority trusted by national news media on major trademark stories.
Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).