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4 ways do-it-yourself-ers mess up trademark applications

I'm frequently asked by clients to help them “fix” defective applications for trademark registration, after the U.S. Patent and Trademark Office's examiners have rejected them.  As often as not, the  rejections are the result of simple mistakes, but once they're made, the damage can be difficult (and costly) to repair.

Anthony Verna is an Intellectual Property lawyer in New Jersey, and he's written a blog post outlining four of the most common mistakes made in trademark registrations.  Here's the link to his article.

I'll bottom line it for you with this list of caveats:

  • Be sure what you're registering is actually your trademark.   A trademark is a symbol, word or phrase that is affixed to goods or services to identify their source or origin.  A business name is not (necessarily) a trademark.
  • Be sure the applicant for the registration is actually the owner of the trademark. Is the company the owner of the mark, or is the individual person the owner?
  • Be sure the date(s) of first use are accurate.  Do the specimens you're filing support the date you're claiming?  If not, your application may be rejected.  Also, be sure the specimens are appropriate for the goods/services covered by the registration.
  • Be sure the description of the goods/services is accurate and complete, covering all of the goods/services sold under the mark, but not overbroad.  Recent rulings by the Trademark Trial and Appeals Board have made it clear that an overbroad or inaccurate description may be considered fraudulent, and can result in cancellation of the registration.

Registering a trademark is an important part of protecting your business' intellectual property assets.  Doing it wrong can be costly, and may result in loss of the asset altogether.    The help of an experienced attorney can streamline the process and greatly increases the chances of success.

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