Errors To Avoid When Filing Your Own Trademark Application

Entrepreneurs frequently select not to spend money on legal fees as they are launching their businesses.  Justifiably, budgets are tight in the early days of the company, and when faced with the choice of spending money on a trademark legal representative or on product development, product development typically wins.  

This results in several businesses and individuals applying to trademark registration with the United States Patent and Trademark Office devoid of first seeking legal advice.  While this can be successful and without event, entrepreneurs quite frequently make errors when managing the online trademark registration application and maintenance procedure on their own.  This post looks at what are probably the top mistakes and how to avoid them.

• Making technical errors in the application

While the fields to be filled out in a trademark application may appear uncomplicated, people untried with the forms make recurrent, and at times fatal, errors.  These errors can result in the application being refused altogether, or in having to respond to an Office Action.  Mistakes comprise:

(i)                  not developing an appropriate description of goods or services

(ii)                not understanding when to apply based on “intent-to-use”

(iii)               not understanding the level of “use” required to support a use-based application;

(iv)              applying to register the trademark in the wrong class

(v)                not understanding whether a mark is registerable as a trademark; and

(vi)              filing an improper specimen

• Not conducting appropriate clearance

When choosing a brand, the very first step is to make sure that the brand is “clear” for registration and use.  If a brand owner chooses a particular name for her new social media app, she must ensure that no third party is utilizing the same or a confusingly similar name for the same or associated services.  If she fails to clear the mark, then the money and time she spent establishing the name as a brand would be exhausted if she later explores that she has to rebrand as the chosen name is already in use. 

• 3. Not replying to office actions

After an application is filed, it takes about 3-4 months before a legal representative in the Patent and Trademark Office reviews it. If the application is ideal, it will be published for opposition.  If it is unopposed, it will then be accepted for registration.

If, there is a problem with the application — whether small or great — the Examining Attorney will issue an Office Action, which necessitates a response.  Failing to submit a response on time will result in the application being deemed discarded. At times, the issue raised in an office action will be minor: the Examining Attorney might require that a descriptive word be disclaimed, or that the goods or services described in the application are amended to be more definite. 

It is indeed possible for entrepreneurs to file applications and get trademark registration service on their own successfully.  If this is the route you select, then it is well worth your time to publicize yourself with the application process to decrease the possibility of a costly issue.