The following is a transcript of my video Three Mistakes That Can Sink Any Trademark Application.
I’ve working with thousands of trademark applications that I have filed clients and, before that, as an examiner at the USPTO. In addition, I spent quite a bit of time just researching and looking at trademark applications of other filers all the time. So over 20 plus years, I have absorbed a lot of the common patterns in trademark applications.
I want to share with the three most common ways to sink a trademark application. You see, many trademark applications don’t get approved. In fact, lots of trademark applications don’t get approved. There are a whole variety of reasons, but some of them are within the control of the applicants more than others. And those are the ones I really want to discuss here.
The first mistake that often sinks trademark applicants is not doing a thorough search before filing. There’s a lot of information to be gained by searching the records before the application is even submitted. That could be information about possible conflicts, that could be information about goods and services, that can be a whole lot of information that can be gained by searching the USPTO. First thing is make sure you’re doing proper searches before you file.
The second common mistake that applicants make is not including proper evidence of use or not understanding what the use requirements are. The use has to match the goods and services. The use has to match the mark. The use has to be captured and submitted properly. There are many elements of getting evidence of use proper. Make sure when you’re thinking about filing a trademark application, that you understand all the issues about use and intend to use and how that factors into the application process.
Finally, the third reason that I frequently see sink trademark applications is the description of goods and services. The description of goods and services is a key element. It has to be specific and accurate and appropriate. Yet, you want to balance that with being broad where that’s allowed and possible to give you the best coverage from the scope of the application. There is a delicate art to balancing the specific versus the broad when it comes to the description of goods and services.
These three elements are just some of the puzzle pieces that go into the complex application. If you really want to understand more about them, you can check out my book, Building a Bold Brand, or my videos at erikpelton.tv. Of course, throughout content, you will hear me say if you really want to improve the odds of success and ensure that it’s being done properly, you ought to work with an experienced professional. It is a complex puzzle. It is a long and winding road to get to registration.
