12 Trademark Mistakes to Avoid at All Cost

12 Trademark Mistakes to Avoid at All Cost

Richard Fonfrias, J.D.
Chicago’s Financial Rescue & Bankruptcy Lawyer
Fonfrias Law Group, LLC


COSTLY MISTAKE #1: Failing to search records of existing trademarks. Many business owners look only at registered trademarks. Others disregard owners of registrations that have been abandoned or cancelled. Legal rights to trademarks are created by using the mark. This means that the legal rights to a trademark may exist even if the trademark has not been registered – and even if the registration has not been kept current.

COSTLY MISTAKE #2: Failing to conduct a sufficient search. A trademark clearance search finds earlier identical as well as similar marks, which can then be evaluated to see if they could cause problems for use and registration. This search should cover all of the uses of the products or services that you contemplate. Failing to uncover potential problems at the outset could later result in costly claims during efforts to settle or take the case to trial.

COSTLY MISTAKE #3: Failing to take into account future expansion. At the outset, you should consider new areas into which your company might expand. Some companies intend to market only to their local area, but when the business takes off, they decide to increase the size of their region. If you fail to consider expansion, you could discover that similar marks used or registered in other area create obstacles. A similar problem exists is you decide to expand into foreign countries where you might need a mark that has been translated.

COSTLY MISTAKE #4: Assuming that because you created the name or tagline, you own the trademark rights to it. Trademark rights do not exist until your trademark is used in business. When you use a trademark, you acquire limited trademark rights in a given geographical area under common law. When you register the trademark, you gain nationwide rights. Both federal and common law trademark rights are subject to the rights of previous trademark owners.

COSTLY MISTAKE #5: Believing that using the next to your trademark is sufficient protection under the law. As noted in mistake #2, even if you don’t register your trademark, common law trademark rights will give you limited protection in your local area. However, if someone else applies for a federal trademark registration of the same mark, you may end up in a costly legal battle that you could easily lose.

COSTLY MISTAKE #6: Selecting a trademark that merely describes your goods. The US Patent & Trademark Office regularly rejects proposed trademarks for being only descriptive. Your competitors have the legal right to describe their products and services without interference from you. Trademarks of words or phrases not usually associated with your product gain easier registration.

COSTLY MISTAKE #7: Assuming that your trademark applies to all of your products and services. Trademark rights are divided into categories of products and services. If you own a trademark is one category, that does not mean you can enforce a trademark claim against someone using the same mark in another category. You can enforce your trademark rights only if your products and services are related so as to cause confusion between your use and the other business’s use of the trademark.

COSTLY MISTAKE #8: Attempting to register a trademark for a long list of products and services. Often, business owners will try to register a trademark that covers all products and services. No question, you want the widest possible trademark protection. But you must actually use the trademark on all of the products and services you listed. Otherwise, your trademark registration may be cancelled. When you apply for or renew a trademark, you must state that you are using the mark on all of the products you listed. And if your statement is not true, you have committed fraud on the USPTO.

COSTLY MISTAKE #9: Failing to register new marks when you have made material changes for marketing purposes. Over the years, you may decide to make changes in your brand to broaden its marketing appeal. These changes can result is the need for new trademark registration because laws in the U.S. and many foreign countries prohibit materials changes to marks as they are registered.

COSTLY MISTAKE #10: Failing to recognize that brands can be more than just words. Your design, logo, colors, sounds, and packaging can all function as trademarks, so you’d do well to protect and enforce them just like you do your brand.

COSTLY MISTAKE #11: Failing to provide third parties with guidelines for using your trademarks. Your trademarks may be used by ad agencies, p.r. firms, wholesalers, distributors and retailers. You should provide third parties with clear guidelines on how to use your marks so you don’t lose your legal rights because of widespread misuse.

COSTLY MISTAKE #12: Failing to watch for improper and illegal use of your trademarks. If you don’t stop infringements of your trademarks, you could use your trademark rights. You should constantly be on guard for misuse by other companies and know how you’ll enforce your trademark rights.