Who wants to go to the expense and time to file for a federal trademark registration for a new brand name and then get totally shot down, rejected? As many as 80% of all trademark filings are initially rejected, with the Examining Lawyer at the USPTO issuing an Office Action refusing registration. Some Office Actions are scary, complicated, and require a lawyer. Others are simple and registration can still issue, if you can cut through the legalese and file a proper response.
Many first time business owners use filing services such as Legal Zoom. Unfortunately, these services can not give legal advice, and they do not represent the applicants. They simply fill out a form on line and any Office Actions come directly to the applicant. It does take experience and expertise to know which Office Actions can be easily overcome, and those which are fatal to the applicant’s filing.
Here are the most common reasons applications get shot down, and how you can be avoid them by doing some homework ahead of time.
“A search tells you if a competitor is already using your chosen mark or a similar one. It can also provide clues on how to expand protection beyond what you dreamed possible.”
1. Failure to Search.
New brand owners often file before they search, which is like walking into a dark room without turning on the lights, hoping you won’t bump into the furniture. They don’t want to spend the money for the search. When you neglect to perform a search of TM Office records, state trademarks, trade directories and online search engine results prior to filing, you are relying up on the Trademark Office to tell you if an existing registration or pending application will block yours. Not a good idea; It can be a huge waste of time and money.
2. Filing to Protect a Descriptive “Mark.”
A trademark seeks to identify and distinguish the source of the goods of one party from its competitors. If your brand name describes your product or service, or one of the features or characteristics, it’s not a trademark. Trademark registration will be denied because your use would prevent others from describing their own goods or services! If you want to obtain a trademark registration, choose a name that is distinctive (like “ALTOIDS”). Leave descriptive and laudatory terms to your marketing materials, and out of your brand name. Rules of the Road for Selecting a Brand Name.
3. Improper Use on Your Website.
Because a trademark seeks to identify the source of goods and services, trademark law requires that the mark be used for the sale of those goods and services – it does not protect mere ideas or dreams. Trademark Office lawyers have the Internet, too. They’ll look at your website and also search the Internet. If you have not used the term to actually sell goods and services, trademark registration will not be allowed. In the case of online stores, this means use of the mark next to the shopping cart where customers see the mark at the checkout stand. Rules for TM Use on a Website.