Four Mistakes to Avoid When Filing a Trademark Application
If you are planning to apply for a trademark, you’ll no doubt be keen to ensure the process runs smoothly. You can go a long way towards making that happen by avoiding these four mistakes:
Not Conducting a Pre-Application Search
Failing to search for similar trademarks is one of the worst mistakes a business can make when filing an application with the USPTO. That’s because trademark law operates on a priority basis. The organization that uses the trademark first owns it.
If you fail to conduct a search, you may waste a lot of money and resources chasing a mark you will never receive. Worse still, the owner of the trademark might take legal action against you.
To conduct a search, you can use the USPTO’s Trademark Electronic Search System (TESS) or hire an experienced business attorney in San Diego to search on your behalf.
Failing to Use the Trademark in Commerce
The USPTO will not register your trademark unless you can prove you use it in commerce.
Federal law defines “use in commerce” as “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”
Generally speaking, this rule means you’ll need to show that you use the mark on your product’s packaging or on the advertising materials you use to sell your company’s services. If you cannot do so, the USPTO will almost certainly reject your application.
Selecting the Wrong Trademark Class
The USPTO has dozens of trademark classes. When filing an application, you’ll need to pick the right one(s).
If you select a class that is not relevant to your trademark or your company, the USPTO can ask you to amend your application. They may also reject it entirely.
On the other hand, if you select a class that is too specific, you may have trouble defending your mark against unauthorized use.
Failing to Monitor the Status of the Application
It typically takes around 18 months for the USPTO to register a trademark. During that time, you (or your federal trademark lawyer) will need to monitor the USPTO’s website for status updates.
The USPTO may issue an office action (a letter explaining a problem with the application) at any time. If they do, you will have six months to file a response.
Should you fail to respond on time, the USPTO may cancel your application.
Your Knowledgeable Federal Trademark Lawyer
Do you need a skilled business attorney in San Diego to help you file a trademark application? If so, you’ve come to the right place! The Semanchik Law Group has been helping businesses like yours register and protects trademarks for years. We know what it takes to get the job done – and we are ready to go to work for you!
To speak to a member of our team, all you need to do is give us a call at (619) 535-1811 or fill in our short online contact form.