Avoid These 8 Toxic Trademark Mistakes
Your trademark is your brand identifier. You can trademark anything from sounds to smells to colors to holograms. In essence, your trademark is just another way of referring to your brand. Over the past eight years I've had the opportunity to file and acquire several trademarks and patents, one of which was the main reason my previous company was acquired. Since launching my latest hosting company we've been filing several trademarks and patents for our company.
Little things I've learned over the years is that it can take over 12 months to complete the trademark process. According to the USPTO's 2014 report (page 6) they now have over 605,000 unexamined trademark applications on file. When you get ready to get your trademark, make sure you look out for these toxic trademark pitfalls:
1. Avoid generic words.
You shouldn't brand your dairy product with the single word "Milk." Or simply call your wonderful bonding product "Glue." A generic word is non-distinctive, and trademark experts agree that non-distinctive trademarks are weak and don't hold up in court.
2. Don't ignore trademark ownership.
Is the trademark in your name, your attorney's name, or your corporation's name? Get it clear and get it straight from the get-go. If this is not clear, there will be trouble if and when the brand, or trademark, is sold in the future. Who gets paid for it?
For most of my Trademarks I like to keep it simple. I personally use Legal Zoom, a legal services company that can help you register your trademark, explains that a startup's trademark should be fanciful, independent, and suggestive. These are all strong brand identifiers. They make it very easy and have gotten it every time.
3. Don't overlook office actions.
During the registration process you might get an office action letter from the USPTO. If you blithely file it away and forget about it you're headed for trouble. An office action letter indicates there is a problem or issue with your trademark application. You should immediately respond to it, or have your attorney respond to it, because if you ignore it for too long your application is abandoned.
4. Watch your language.
If you're all fired up about the idea of using a naughty word or phrase for your trademark, just cool your jets. You might think you live in a very liberated era where anything goes, but there are still some legal strictures when it comes to the use of profanity, obscenity and other "vulgar" words and phrases, as defined by the courts and the USPTO. Besides, do you really want your business to be advertised by potty word of mouth?
5. Be thorough.
You've searched the PTO online database, and your trademark name wasn't in it, so now you're ready to go! Not quite. Trademark rights stem from use, not merely from registration. The PTO database is NOT exhaustive. Your trademark name of "Kitty Catty" may not turn up, but that doesn't mean there isn't already a "Kitty Katty" trademark out there already.
You also must search state trademark registries, industry publications, and especially internet domain names. A careless mistake here could mean years of legal action and attorney's fees down the road.
6. Don't overestimate your trademark.
"My trademark will cover all goods and services no matter what they are or who else has them!" Maybe; maybe not. In general, trademark ownership for one class will not allow you to enforce your brand against a different class of goods or services using the same trademark name.
You can enforce your trademark only if their services and products are related to yours in such a manner as to create confusion in the public mind. Dove Soap and Dove Chocolates are good examples of this.
7. Always protect your trademark.
"Once my trademark is registered and up and running, I've got nothing to worry about." While it's true that once your trademark is registered properly it will not expire, you can still lose your trademark's power in a number of ways, such as improper use by employees or third parties, or, most importantly, by knock-offs. Apple Watch knock-offs were available 24 hours after it was launched in San Francisco. What are you doing to protect your trademark?
8. Don't forget to trademark your tagline.
"It's not a trademark, it's a tagline; so why bother to get it trademarked?" Think this one through, Mr. or Ms. Entrepreneur; if you've got a great tagline, don't you want to protect it? Taglines are the lifeblood of many products and services, becoming almost iconic.
There are 34 classes of goods and 11 classes of services recognized by the United States Government, so your individual trademark has a good chance of making it — if you avoid these toxic trademark blunders.
Related: The 'Got Milk' Slogan Is No More
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