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  • Writer's pictureMichael W. Schroeder

Trademark Mistakes to Avoid

The prospect of kickstarting your personal venture is as challenging as it is thrilling. Besides giving you the opportunities of exploring new avenues and utilizing your creativity and imagination to the fullest, it also comes with its fair share of technical challenges and logistical hurdles. At the outset, you need to bear in mind that you are competing in a market that is increasingly saturated.

Why are Trademarks Important?

Irrespective of the domain in which you are starting your business, you will always come across firms and enterprises who are either operating in the same space as you are, or which have a similar set of core objectives and goals as your venture. In this situation, it becomes highly important for you to protect and, where appropriate, register all of your intellectual and original assets in order to avoid unprecedented cases of infringement lawsuits in the future. This is where federal trademark registration can come to the rescue.

Not only do registered trademarks help you secure your brand image and marks, but they also act as a status symbol for your brand and organization. Additionally, with a trademark opposition lawyer at your disposal, you have a strategic advantage to stave off many objections and challenges that your competitors and rivals might try to assert against you on ambiguous grounds. Even though the process of registering a trademark is fairly straightforward, there are certain pitfalls that await you should you not happen to follow the correct procedures.

Listed below thus, are a few trademark mistakes that you must avoid during the course of registering one.

Steer Clear of Generic Words:

The most obvious mistake that brands and businesses commit while naming themselves is to make use of a term or a phrase that is absolutely commonplace or generic. In the process, they run into a host of problems while registering the trademark for their enterprize. Drawing a trademark upon a non-distinctive term not only puts you in risk of direct conflict with your competitors and rivals but also hampers your brand visibility and presence by a great deal. Generic and merely descriptive trademarks are weak and are not distinctive enough to stand their ground in court. Ideally, if your company is a startup then your trademark should be suggestive, fanciful, and independent in nature, attributes that are associated with being prominent brand identifiers.

Take Ownership of your Trademark:

At the outset, establish whether the trademark in question is established under your name or under the name of your organization. In the event that there should exist any ambiguity on this front, attempts should be made to resolve it at the earliest convenient time. Failure to do so might lead to trouble in the future when you are trying to sell your trademark or brand. To avoid such inconveniences, business owners and entrepreneurs are always encouraged to talk to their trademark attorney in order to discuss which method of ownership would be most beneficial, given an entrepreneur’s current situation and future goals.

Take Care of Office Actions:

When you attempt to register your trademark, there will be instances where you might you get issued with an office action letter from the United States Patent and Trademark Office (“USPTO”). Make sure that you securely file away this letter along with the other paperwork of your company. An office action letter sheds light on all of the issues and problems that exist with your trademark application. Hence, you are advised to respond to these letters expeditiously. However, it is highly recommended you enlist the assistance of a trademark opposition lawyer to draft a response. After a USPTO Examiner issues an Office Action, representation by an experienced trademark attorney makes success 68% more likely, according to a study by the Stanford Law Review. Our Trademark.Legal attorneys are uniquely experienced in this nuanced area of law, enabling us to deliver the knowledge and strategies you need to maximize your chances of obtaining a successful registration. Should you fail to take prompt action on this front, the application will go abandoned altogether.

Be Mindful of Your Language:

As tempted as you might be to make use of an edgy term or a phrase for the purpose of your trademark, it might be best if you reconsider. Even though we currently live in an age where the space of content creation and creativity is pretty liberalized, there still exist many structures out there that frown upon the usage of casual slangs, profanities, obscenities, and other words and phrases that are deemed to be vulgar. Still, there may be certain situations where you would want to register such marks. Here, it is important to note that the Supreme Court recently ruled, in Matal v. Tam, 582 U.S. __ (2017) and Iancu v. Brunetti, No. 18–302, 588 U.S. ___ (2019), that the USPTO’s prohibition on disparaging and scandalous trademarks is an unconstitutional violation of the public’s First Amendment right to free speech. Consequently, vulgar, obscene and disparaging trademarks are currently permissible for U.S trademark registration purposes.

Be Thorough:

Before you proceed with registering your trademark, you should carry out a thorough research with respect to state trademark registries, internet domain names, and industry publication names in general. With a horde of new companies springing into existence with every passing day, it has become rather imperative on the part of business owners to be on a continuous look out for domain names and brand names that are unique and absolutely original to draw no allegations and suspicions from their competitors whatsoever.

Opting for Trademark.Legal:

Located in Los Angeles County, California, Trademark.Legal is an experienced and renowned law firm that is committed towards helping both individuals as well as businesses grow, protect, and enforce their trademark and intellectual property rights in a competent manner. Our team of highly experienced trademark opposition lawyers help you accomplish this objective by providing you premium, trademark legal counsel at cost-effective prices. Contact us at, or call us at 323-553-1541, for a consultation with a seasoned intellectual property attorney.

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