Creating and selling your products or services takes significant time and money. Trademarks are vital in connecting the product and company to consumers’ minds. In addition, they provide powerful tools to protect your business and brand as the source of goods or services. From my perspectives as an IP attorney serving many startups, securing trademark protection for your brand is one of the highest ROI actions you can execute for your company to protect its GTM plan and company valuation.
A trademark could be any word, phrase, or symbol that distinguishes the source of the goods and services. Additionally, trade dress is also a trademark. It refers to the product’s appearance or packaging.
The spectrum of trademarks is a range, with distinct or arbitrary marks, such as Nike and Google, on the one hand, and descriptive terms (many of them which cannot be trademarked), on the other.
Table of content
Trademark mistakes that can hurt your branding efforts
Can you rely upon the “Tm” to market your brand without registration
Mistakes To Avoid With Your New Catchy Logo
Can You Apply One Trademark That Covers All Possible Goods?
Here are some trademark mistakes that can hurt your branding efforts
#1. Selecting a descriptive term as your mark
A trademark can be descriptive if it “conveys the immediate idea of ingredients or characteristics of the goods.” Apple for fruits is an example of a descriptive word.
But, “Apple” is not descriptive of computer or digital products. If you want to make your mark unique, choose a fanciful term like Xerox or Google.
#2. Not applying for trademark registration
Federal registration of any mark confers several benefits, including notification to the public that you claim ownership of the mark and legal presumption nationwide of ownership. You also have the exclusive right to use the mark in connection to the goods/services mentioned in the registration.
#3. Not searching for existing marks before registering the trademark
Before using the trademark or registering it, you should not search for existing marks. The search will determine possibilities of any “likelihood to confusion,” i.e., if the mark has been registered for or applied for, and if it is
(1) the same OR closely related to your mark, and
(2) used for similar products or services.
It can also be used to identify trademark owners with unregistered rights (or “common-law”) in the areas where they operate.
#4. Improper use of the mark
Trademarks can be used only as adjectives. They should not become verbs, plurals, possessives, or even plural. When you use your mark as a noun, you can generalize it.
Otis, for example, owned the Escalator trademark. But Otis lost it when the US Patent and Trademark Office ruled Otis had used an escalator to describe generic terms in its patents.
#5. Use of trademark symbols in an improper manner
You must include the appropriate (TM), SM, or ® symbol when using trademark symbols in publications to be distributed in the United States. Publications distributed outside the United States should be attributed with the appropriate trademark notice.
A trademark can make a brand extremely valuable. For example, apple is the most valuable global brand, with approximately $146 billion US dollars.
Google, the second-leading brand globally, has a brand worth of roughly 94 billion US dollars. You can increase your brand value by using the trademark system.
Top Domain Name Mistakes
A tipping point happened in 2016: According to a UPS annual survey, consumers said that they shop online more than in stores. Your domain name is the front door to your business in the online world.
This is because your domain name links to your website’s internet protocol address (IP). Unfortunately, many companies mistakenly associate the domain name’s rights with trademark rights.
These rights allow you to identify products or services belonging to your business. Therefore, it would be best if you considered the following caveats when considering a domain name:
Registering a domain name without searching for trademarks is a bad idea
ICANN can take your domain name from the trademark owner through an ICANN proceeding. Owning a domain name doesn’t give you any trademark rights. You could, for example, be required to give up a domain name you have registered if it violates another’s trademark rights.
Do not choose a domain that is too similar to your competitors
This issue is a repeat issue of the first issue. For example, suppose the trademark owner of the competition owns a trademark, and your domain is confusingly related to that trademark name. In that case, they can send you a cease and desist notice and then follow up with legal maneuvers.
Selecting a long domain name
Although long domain names are easy to find, they can be very valuable. Domains just one or two letters long are more difficult to spell or forget by customers.
Do not forget to consider other meanings for the domain name
Bad branding can be caused by a small typo or domain names. For example, be careful with the domain name for Pen Island or Experts Exchange. If your target market is Spanish-speaking, avoid the GM’s Nova branding error.
Not applying for trademarks for your business
However, federal registration of a brand has many benefits, including notification to the public that you claim ownership of the mark and legal presumption nationwide of ownership.
You also have the exclusive right to use the mark in connection to the goods/services covered by the registration. You also have the right to block any competitor selling knockoffs using your trademark, including domain name, online.
It takes significant effort to create and sell your products or services. Trademarks are key to connecting the product and company to consumers’ minds.
These are powerful tools to protect your brand and business as the source of goods or services. PatentPC allows you to register your trademark immediately.
Can you rely upon the “tm” to market your brand without registration
A company may put a “TM” next to a trademark to claim the rights to its brand without paying for federal trademark registration. However, does this save you money long-term?
Federal trademark registration is not required for your business. Instead, your business relies on common-law trademark rights, which are based upon the priority of use within your current area of operation. But this is not true for businesses outside of your immediate operating area.
As a result, you may have to stop using your trademark outside your current location if the competition has applied for federal registration. This can seriously limit your marketing opportunities in the Internet age.
Federal trademark registration does NOT mean you have exclusive rights to your mark. The date you file a federal trademark registration application, whether based upon actual use or intention to use, is your date of “constructive uses.”
This establishes in the US a national priority except against others who started using (or applied and ultimately received registration) of the mark before that date. Therefore, “prior users” who applied for or used the same marks before you can continue to use them. This could adversely impact your branding program.
Federal registration provides you with nationwide US rights. But, federal and common law trademark rights are susceptible to rights held by others. It is challenging to determine trademark rights in these situations without careful analysis of complex facts.
Complex law can also be used, resulting in additional uncertainty and increased expense down the line. Therefore, you should apply for your federal trademark registration immediately to minimize the risk and cost of your branding efforts.
Mistakes To Avoid With Your New Catchy Logo
You have spent a lot of time developing your product. Now you have created a unique new logo. Do you want to rest easy and watch the sales grow? Here are some errors that you need to avoid
Think that you have trademark rights simply because you invented a phrase, logo, or other marks. However, your logo can only be used in commerce. Therefore, you do not own any trademark rights.
However, if the logo is used in commerce with your products or services, you have limited common law trademark rights; federal registration grants you nationwide rights.
Common law and federal trademark rights may be subject to rights already owned by others. Therefore, it is essential to be the first to file. Choose a trademark that best describes your product.
The US Patent & Trademark Office most frequently rejects a trademark application because it is “merely descriptive.” This rejection stems from competitors’ right to refer to their products and services accurately. Registering trademarks with abstract phrases or words unrelated to your product is more accessible.
#1. Not properly searching for existing trademarks
Not just looking at what’s already registered; it is insufficient. Owners whose registrations were “canceled,” “abandoned,” or canceled should not be ignored. Trademark rights are created through the use of the trademark.
#2. Incorrectly using your trademark.
Your logo can’t be used on business cards and letterhead. A trademark is created when your logo appears on the packaging, labels, or the product itself. This allows customers to identify the company behind the logo.
Can You Apply One Trademark That Covers All Possible Goods?
Think that your trademark applies to all goods or services. Trademark protection is broken down into several classes. You cannot enforce a trademark’s use in another category if it is a trademark you own in one class. If the products or services are closely related, it is possible to infringe on your mark.
A trademark application is made to cover a broad range of goods or services. Some respond to number 5 by listing all services and goods on their trademark application.
You can imagine thinking, “What might this trademark be used on?” even if you only have one type of goods. However, this is not the right question.
You want to ensure that your trademark registration has maximum protection. However, you must use it on all the goods and services you list.
Trademark applicants will declare that the mark is used on all the goods and services listed in their application or renewal. False signatures are grounds for prosecution by the Patent & Trademark Office.
Selecting a Mark
Once you determine that the protection you need is trademark protection, selecting a mark is the first step in the overall registration process. Because not every mark can be registrable with USPTO, this must be done carefully. Some marks are not legally protected.
In other words, they may not be able to serve as the basis of a legal claim from the owner seeking to stop others from using similar marks on related goods and services.
Businesses and individuals new to trademarks and the application process often choose a mark for their product or service that may be difficult to register and protect.
It would be best if you considered the following factors before you submit a trademark/service-mark application: It would help if you determined whether the mark you are trying to register can be registrable.
The strength of your mark will determine how difficult it is to protect it. The USPTO does not register marks. As the mark owner, you are responsible for enforcement.
Mark Format
It is essential to identify the mark format: a familiar mark character, a stylized/design, or a sound mark.
Identification of goods/services
You must identify which goods or services the mark applies to. Are you looking for something? Always search the USPTO database to see if someone is already claiming trademark rights for wording/design similar to those used on related goods/services by a federal register.
International Filing
An international application may be filed if you meet the following requirements:
1. Basic application/registration (“basic mark”) – You must have already applied for or registered a mark with your Office of Origin. This registration or application is called the “basic Mark.”
2. Meet one of these requirements to be eligible for entitlement
A business must be located in a Contracting Party. You can be a national from a Contracting Party. The National Trademark Office is where you will find the necessary connection.
This office is also known as your Office of Origin. In addition, this office serves as an intermediary to file international applications.
The following information is required:
- Name and address
- A reproduction of the mark must be identical to your primary mark (local application or registration).
- Designation of the Contracting Parties in Which the Mark is To Be Protected;
- There is a list of goods and services for whom the mark is to be protected, which should be identical to, or smaller than, the basic mark list that you applied for.
- International application fees