Applying for a Trademark? What Could Go Wrong?
Applying For a Trademark– What Could Go Wrong?
Do you have a business or product name and want to protect it so it becomes exclusively yours? Simply using the trademark symbol ™ for your new name is easy enough, but your trademark is better protected when you obtain a Federal registration and can use the ® symbol. The process seems straightforward enough – fill out the application and submit it to the U.S. Patent and Trademark Office (“USPTO”). But as you can imagine, you can’t count on the process always going smoothly, and it’s smart to anticipate hitting a bump in the road.
When you submit an application to register a trademark, you’ll want to be aware of several pitfalls that can arise:
- If you don’t conduct a thorough search to discover if your desired trademark is already in use, it can lead to challenges and rejection.
- If you don’t properly describe the goods and/or services that you provide under your trademark, your application could be rejected or limited in scope.
- A generic trademark cannot be registered. A trademark that merely describes a quality of your goods or services can be registered, but the path is not so straight forward and can hit a lot of roadblocks.
- Once your trademark is registered, you can lose your exclusive rights if you do not actively protect it.
Of course, there’s more to it than this, but if you have something that you want to protect, working with an IP attorney is your best bet. Let me give you some real examples.
The Option to Oppose a Decision
One client I worked with was using his trademark for 5 years before he decided to register it. But when he put the wheels in motion, his submission for a registration was initially refused due to the existence of a prior application -- someone had previously filed an application for the same exact word as a trademark, and it was allowed by the USPTO and published in the Federal Register. This is a great example of why simply using the ™ symbol doesn’t offer full protection.
If you’re not working with an attorney, you may not know that there is a 30-day window after a trademark is published where you can oppose the USPTO’s decision to allow the trademark. I asked for an extension of time to oppose the decision so we could work on an alternate strategy. The delay gave us time to reach an agreement with the other party where both companies could co-exist because of the differences in the customers of the two parties’ services.
A Clearance is Essential
Then there is another satisfied client who asked me to perform a trademark clearance. This is a search not only for pending or registered marks that are identical or very similar to the one you plan to use, but also for any use of the trademark in the marketplace, in state business databases, on social media, or elsewhere in the United States. In this case, there was a company that had registered an arguably similar, but not exact, trademark.
With some research, we learned that this company likely was no longer in existence or wasn’t using the trademark. The client proceeded with caution while understanding the potential roadblocks. When the application was refused by the USPTO due to this other trademark registration, we filed to cancel the pre-existing registration on the grounds that the registered trademark had been abandoned and not in use. We were successful in cancelling this registration, and my client’s mark proceeded to be registered.
Don’t Wait for Trouble – Be Proactive
In addition to obtaining a Federal registration, it’s important to be on the lookout for competitors using or planning to use a trademark that is confusingly similar to yours. Just doing a web search on your own probably won’t find these uses. I offer a trademark watching service that is more comprehensive than a simple web search. Offenders are searched weekly, and I’ll analyze any hits before approaching you with ones that could present an issue. Give me a call or shoot me an email to find out more.
All these twists and turns in the process could mean a frustrating time for you if you’re not working with a professional. As a creative problem solver, I have the knowledge and experience to support you and your goals. Let’s discuss where you are in your quest to protect your intellectual property.

