Filing a trademark application to protect a company’s brand name and logo is a common practice to ensure legal protection of intellectual property. While there are some people who do manage to successfully file their own trademark applications, it is common for a DIY trademark application to be rejected. There are many common risks of DIY trademark applications, however, visiting with an experienced intellectual property attorney can help you avoid some of the most dangerous legal pitfalls. Polymath Legal PC may be able to help you file your trademark application and possibly help avoid the most substantial challenges that many DIY applicants encounter. Contact our dedicated IP team today at (833) 931-6418 to discuss your legal options.
Mistakes in the Trademark Application
The application to file for a trademark is complex and confusing. There are many options, which makes it easy to choose incorrectly. One choice may impact other choices later in the application, which means that one mistake at the beginning could result in filling out the entire application wrong.
According to the United States Patent and Trademark Office (USPTO), some of the most common mistakes that people make when trying to file a trademark application themselves are:
- Identifying an incorrect applicant/owner, including naming someone without their consent
- Asking for too little protection
- Using the wrong filing basis
- Incorrectly identifying the goods/services the trademark will be used for
- Failing to ensure that a trademark is descriptive
- Attempting to trademark a commonly used phrase
Some of these mistakes can be fixed, while some require filing a new application. Either way, a single mistake can cost hundreds or thousands of dollars.
Trying to File an Existing Trademark
If someone else has already registered a trademark, a new applicant for the same or similar trademark will be rejected. If a mark is very similar to an existing mark, it will be rejected by the USPTO. There are 13 different factors that the USPTO uses to determine if marks are similar. These factors are not all weighed the same. This means that if you do not know all 13 factors and how they are weighed, you may determine that your mark is not similar and submit your application only to have it rejected because there is already a similarly registered mark.
Failing To Recognize Similar Marks
If someone is doing a trademark search themselves without the assistance of an intellectual property attorney, they may easily overlook the marks that are similar to their own because they look completely different. For example, differently spelled words may be the reason their application is rejected. The ”overall commercial impression” is also important. The overall commercial impression is whether two trademarks would cause a consumer to think that they are the same company. For example, Blue Nun and Blue Chapel may be confused for the same company because both nun and chapel make a consumer think of either church or religion. Combined with the word Blue, it is easy to see how the two might be confused.
Additionally, if there are multiple words and/or design elements (which are assigned six-digit codes by the USPTO for search purposes) in a logo, these will need to be searched both individually and in specific combinations to ensure a thorough search for similar trademarks. This is one of the most common risks of DIY trademark applications, because most people do not know they need to perform these searches, nor do they know how to perform them effectively.
Inability to Respond to Office Actions
Every application will receive at least one office action from the USPTO. It may be one that explains why the examiner approved the application. Unfortunately, for many DIY applications, they often receive at least one office action informing them why their application is being rejected or corrections that need to be made.
It can take an attorney several hours to craft a response to an office action, even with significant experience, skill, and knowledge. For the average person filing a trademark application themselves, it may be difficult or impossible to understand the action and create an appropriate response. If you have received an office action from the USPTO, consider visiting with the experienced California IP attorneys at Polymath Legal PC to help you understand your options regarding how to respond.
Significant Amounts of Lost Money
Perhaps the most frustrating of the common risks of DIY trademark applications for many people is the money that can be lost. A USPTO trademark application has non-refundable fees associated with filing. Many people who take the DIY approach do so because they want to save themselves the cost of attorney fees.
Before moving forward with a DIY approach, consider the following:
- What is the cost of your time? Consider the hours spent on filling out the initial application, doing the trademark search, reading and responding to office actions, and possibly correcting or filling out a second trademark application. Is it less expensive than a lawyer to take that time away from other business matters or even personal time with your family?
- What else in your business gets ignored while you work on the application? Are you putting research and development of new products on hold? Maybe you are not marketing your business or products while working on the trademark application. Maybe you are ignoring other important parts of your business to focus your attention on the application. This can lead to your business not growing the way it should.
- What business growth might you miss out on? The hours, weeks, or even months that you spend working on the application might mean missing out on growth opportunities for your business.
Consider Visiting with an Experienced California IP Attorney Today
There are never any guarantees when it comes to filing a trademark application. You can potentially reduce the chances of common risks of DIY trademark applications by working with an experienced attorney who comprehensively understands the trademark application process. Contact Polymath Legal PC at (833) 931-6418 to learn more about filing a trademark application today.