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Top nine trademark application mistakes

Posted by admin on: November 8th, 2010

Thinking of applying for trademark registration with the U.S. Patent and Trademark Office? Of course, registering a brand name, slogan, or logo is a very good idea as it enhances your protection and value of the trademark.

However, if you plan to file a trademark application be aware of the following nine ways to make an error that could prevent it from becoming registered or limit its effectiveness even if registered:

  • Failure to search first. Without first doing a comprehensive search, you do not know whether someone may already be using a similar name for a similar product or service, or whether there is a pending application or registration that could block your application.
  • Not including the proper logo or wording as the “drawing.” The wording of the proposed trademark and the image of a proposed logo cannot be significantly or easily amended. There are procedural restrictions regarding any such amendment. As a result, errors in the wording or the image can derail an application.
  • Listing the owner incorrectly. Who owns the trademark and the application? A corporation? An LLC? An individual? A partnership or joint venture? It must be identified correctly or the application could be void.
  • Not knowing whether the trademark is currently “used in commerce.” U.S. trademark applications can be based on current use in commerce or a bona fide intent to use the trademark for the goods or services identified in the future. Stating that there is a current use in commerce when there is not could affect your rights. And stating that you intend to use the trademark when you are already using it in commerce can mean that your application will take longer and cost you additional government filing fees.
  • Improper description of goods or services. The scope of the goods or services in the application cannot be expanded after the initial filing is made. In addition, if there is a potential conflict, defining the goods or services with the potential conflict in mind may be significant.
  • Is the trademark used as a “collective membership” or “certification” mark? Certification marks and collective memberships marks are special types of trademarks that require special applications with additional information and evidence. A certification mark is used by authorized parties to show that goods or services meet certain qualifications and standards. A collective membership mark is used by the members to signal their membership in a group or organization.
  • Filing with the U.S.P.T.O. TEAS form or its TEAS-Plus form? When using the “TEAS-Plus” form, an applicant saves $50 per Class filing fee, but agrees to certain restrictions. Two significant restrictions are (a) selecting only a description of goods or services which is in the USPTO’s database, and (b) agreeing that all flings for the application will be made electronically or be subject to an additional fee.
  • Properly signing the application. For an application to be valid it must be properly signed. To be properly signed, the signatory must have the authority and/or title that meet the USPTO guidelines.
  • Make sure you receive USPTO emails. The USPTO will generally send all correspondence regarding the application, including the filing receipt and any Office Actions, to the email provided in the application. It is critical to make sure that USPTO emails are not blocked by any spam filter and can be received.

© 2010 Erik M. Pelton & Associates, PLLC. All Rights Reserved.

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