Do-It-Yourself Trademark Applications: Penny Wise; Pound Foolish

Trademark protection is a key part of corporate due diligence, serving to improve the value of company’s chief intangible assets. Too many business owners, however, mistakenly believe that seeking trademark protection merely involves filing a form with the United States Patent and Trademark Office (USPTO). They forego legal counsel, assuming they can secure protection themselves and save some money. In the end, they are often surprised by the complexity of the trademark registration process. Here are seven traps that often befall do-it-yourself trademark applicants.

1. Choosing a problematic name. Many proprietors want to name their storefronts after themselves. They will be surprised down the road, however, to discover that the USPTO may reject their trademark application because it contains a surname. Similarly, establishments that include geographic descriptors (e.g. “Main Street Ice Cream”) or generic terms (e.g. “Acme Tires”) may  not be available for registration. Working with a trademark attorney before commiting to a name can help avoid these traps. She will know the exceptions to automatic refusals and the arguments that can potentially overrule a refusal. The right name makes it easier to promote a business.
2. Overlooking a trademark search. Commonly, business owners confuse their corporate filings with their trademark filings. They assume if the name is available with the Secretary of State that the name is free to use in the marketplace. In reality, reserving a corporate name in no way means that the name is available as a trademark.  Only a full trademark search done through specialized databases, not a Google search, can provide a full overview of market usages.  That search then should be analyzed based on existing trademark case law to determine whether a mark is available for use and/or registration.
3. Improperly describing the goods/services in the application. Many filers make the mistake of describing their goods or services too broadly or too narrowly and therefore inadequately describing their businesses’ goods or services. In fact, ambiguity in listing the goods and services is a common cause of delayed or even rejected trademark applications. A trademark attorney will know based on previous experience what wordings the USPTO will find acceptable, saving the applicant time and money in the long run.
4. Redesigning one’s logo. After the business has designed its perfect logo and filed its trademark application, the marketing team may decide to move a line or change a Pantone color. In so doing, the team inadvertently may have jeopardized any pending application for trademark protection.  A trademark attorney, on the other hand, will help determine when the design is far enough in development that it is the appropriate time to file for protection.
5. Ignoring the marketplace. Trademark infringement occurs when consumers are likely to be confused between two trademarks. Without the proper due diligence and analysis, a business may choose a name that infringes on another’s preexisting rights. Take, for example, the fifteen-year battle between Patsy’s Restaurant and Patsy’s Pizzeria in New York. In some cases, even a foreign restaurant may claim trademark infringement. In one case, a court granted injunctive relief to the French restaurant “Maxim’s” against a NYC restaurant, noting the French restaurant’s priority based on uninterrupted use of the mark abroad and the fame of the mark in New York City. In short, the do-it-yourself trademark applicant is likely unprepared to evaluate the legal standard of “likelihood of confusion,” leaving a business vulnerable to legal challenge.
6. Improper Specimen. Do-it-yourself trademark applications frequently submit improper specimens. Business cards and website pages may not suffice to show use in interstate commerce. The result will be delay and added expense or even rejection of the trademark application. It’s worth the consultation with experienced counsel to submit an application that has all the correct component parts.
7. Use in Interstate Commerce. Showing use in interstate commerce is a requirement for a federal trademark application. Too many business owners who go it alone do not understand what this means from a legal perspective. As a result, even if the trademark proceeds to registration, it is subject to challenge and even cancellation by a competitor. The last thing a business owner would want is to lose a trademark into which it has invested time and money. Imagine having to lose years of good will if it can be determined that your trademark application was based on false statements. In addition, there is potential culpability for the person who signed the application. Again, checking in with experienced counsel can avoid this drastic problem.

An improperly filed trademark application can adversely affect the scope of an owner’s trademark rights and open the door to a third party challenge. The mistakes above can cause delay and lost filing fees at a minimum. At the maximum, they can create significant legal risk for a business, exposing it to claims for trademark infringement and unfair competition claims. Consulting a trademark attorney before filing prevents costly mistakes and ensures that trademark rights accrue properly to held build the brand and the value of the intellectual property.

Copyright 2013 Kyle-Beth Hilfer, P.C.