Common Mistakes to Avoid When Registering a Trademark
Introduction
Registration of a trademark is an important step toward building a brand on solid ground. However, the process is quite challenging, and small mistakes can result in everything being disarranged, with regard to causing delays in the application, litigations, or even refusal of the application. Lack of distinctiveness to incorrect classification are among the common errors that can bring derailment upon your trademark registration. Whether you are a startup founder, an entrepreneur, or an IP professional, knowledge of these areas can save you time and resources. The guide below will walk you through the most frequent mistakes and give you practical solutions to successfully register your trademark.
Today, in a competitive marketplace, the difference between a successful strategy for the long-run has to do with brand identity. One of the most effective ways to protect your brand and all that it owns, including distinctive features, is through the registration of a trademark. Trademark law grants legal protection of your business name, logo, or slogan against other individuals using the same with regard to protection over intellectual property. The trademark registration procedure has a tendency to be trying, and several business owners fall into common pitfalls that can delay or even sideline their trademark application. In this blog, we are going to take a closer look at some of the most common mistakes in the process of registering a trademark and how you can ensure that your brand is well covered from the very beginning.
Incomplete Search on Trademarks:
It is definitely critical to make a full search before filing a trademark application to make sure no one else has registered a similar mark already. Most entrepreneurs would avoid this step or do a rather cursory search, believing that their logo or name would not be an issue for trademarking because it seems unique. Then, one could find out that another company had prior rights on a similar trademark and it could fetch an entrepreneur a lot as far as legal battles are concerned.
The full trademark search should include both exact matches and similar names, logos or slogans in the same class of goods and services in the same industry. This is simply because a trademark that is too close to an already existing one would cause a confusion for those customers, hence being rejected by the trademark office. It is readily available on official government databases; or, if you plan to expand business activities across borders, consider outsourcing this process to specialized services.
How to Avoid This Mistake:
Invest in a full trademark search through official databases such as national trademark offices. Also, you can use a meeting with a trademark lawyer to guide you in checking if your chosen mark is actually viable and distinctive so as not to cause confusion.
Choosing a Trademark with Weak Distinctiveness:
Perhaps the most common reason for refusal of trademarks is that they fail to qualify on grounds of being not registrable owing to lack of distinctiveness. A trademark must be distinctive enough to do its job-that is, to be able to distinguish the goods or services of the brand from those of any other person. If your trademark is generic or merely descriptive, then your trademark application will be denied. For example, when a person attempts to register a trademark like “Fresh Apples,” this is over a fruit business-it is normally refused as being descriptive of the goods offered for sale.
A vague, suggestive, or fanciful trademark may lend your name to the register. Arbitrary marks consist of actual words that bear no meaning whatsoever related to the products or services they might represent, like “Apple” for computers. Suggestive marks don’t state on their face something about the product or service but do require imagination to link the two together. Fanciful marks are words or names that are made-up, such as “Google,” and these provide strong protection because by their very nature they have unique identities.
How to Avoid This Mistake:
While selecting a trademark, go for something unique and memorable. Avoid what is descriptive, that is, which simply explains the qualities or feature of your product or service. A good trademark should be imaginative or symbolic. That should represent your brand and not explain it.
Wrong Categorization of Goods and Services:
You have to specify the classes of goods or services for which you want protection when filing your trademark application. Nice Classification is an international scheme of dividing goods and services into 45 classes. You may also apply for the wrong class of trademark, which will limit or completely render your trademark inapplicable.
For instance, you would file a brand of clothing in Class 25, but your business may sell accessories, which then require further classes. Failure to file under the proper class may expose your business because another company can potentially file a similar trademark in a different class that you did not classify under.
How to Avoid Making This Mistake:
It’s not wise to file an application too soon. Take time before filing an application and analyze your products and services so that you would be able to identify the classes they fall into.
The World Intellectual Property Organization also has a guide for the Nice Classification that can serve as a useful tool in your process of identifying how your goods and services should be categorized. It also would prove wise to speak with a trademark attorney to ensure that an application covers your business for all pertinent classes.
Failure to Provide Satisfactory Evidence of Use:
Applicants in most jurisdictions are required to provide proof of use of their trademark, especially where the mark has been placed into commercial use before filing of the trademark application. Failure to provide satisfactory evidence that can come in the form of product labels, packaging, invoices, or marketing material can lead to the application being delayed or outright rejected.
Such an application is called an “intent-to-use” application. But if you fail to prove that you used the mark within the stipulated period of time after filing your application, then your application might get cancelled.
How to Avoid the Mistake:
Be prepared to collect all relevant proof of the trademark’s use in commerce at the time you submit your application. If you file an intent-to-use application, have a strategy to commence using the trademark commercially and be ready to meet any deadlines for submitting proof of use.
Failure to Consider Conflicting International Trademarks:
If your business is to expand into other countries, you should be conversant with the trademark laws of these countries. Your trademark registration in one country does not automatically protect your rights in others. Many businesses secure trademarks at home but forget to protect their brands in the other markets they will expand in.
As such, the Madrid Protocol has, of late, made registering a trademark in several countries easier, but still, the trademark laws of the various jurisdictions require familiarity. Every country would have its set of rules and deadlines towards these processes and procedures. What may pass for the other country may not go well in this country.
If you plan to operate in foreign markets, your preferred choice is to file an international trademark application under the Madrid Protocol, as it allows you to apply for protection in multiple countries and also saves time and cost. Through this, you will be able to quite definitely protect your brand across all markets.
Delays in Filing:
Also a common mistake is waiting too long to file a trademark application. In most jurisdictions, trademarks are awarded on a “first-to-file” basis that means that whoever files first usually gets the rights to the trademark. If you wait for too long to file your application, you leave your brand to your competitors who may lay claim to the same or similar mark even before you do.
Moreover, the more you delay filing, the more evidence one would be required to present that, through market use, your mark has become distinctive or has acquired prior rights. Delayed action also tends to increase the chances of other companies coming forward with potential lawsuits for having already registered similar marks.
How Not to Make This Mistake:
File your trademark as early as you can, of course especially if you belong to a competitive industry. As soon as you have that marked different and ready to roll out your product or service, start registering to secure your rights.
Failure to Monitor and Defend Your Trademark:
As soon as one registers the trademark, it is actually a process of keeping a constant check on its use so that others are not allowed to indulge in infringement of one’s rights. Dilution of your brand value and damage to reputation also become a concern when the infringing party sells substandard products or services.
Many businesses don’t take the time to build a system for watching their trademarks and protecting them if they must be. Unless you are regularly monitoring, you may not even know who else is employing a similar mark in a confusing or damaging way to your business.
How to Avoid This Mistake:
Develop a trademark monitoring strategy to be on the lookout for possible infringement. There are online tools and trademark watch services that can alert you if similar trademarks are filed or in use. If you do find any infringement, have the means at your disposal to deal with it-be it through negotiation, cease-and-desist letters, or the courts.
Conclusion:
While registration of the trademark is a very critical step in building and protecting the brand, it may be fraught with pitfalls. Avoidance of mistakes, such as not conducting a comprehensive search or one that doesn’t have distinctiveness, misclassifying goods and services, and delaying the filing process, goes a long way in increasing the possibility of getting trademark protection.
Being proactive and vigilant in your application, from the filing to the defense of trademark rights, ensures that your brand is legally protected and remains of value in the marketplace. Regardless of the size of any business or its need to expand to international markets, a well-protected trademark is an integral asset in today’s business environment.
Author: Shambhavi Bhardwaj, a student at National University of Study and Research in Law, Ranchi
, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.
References:
- World Intellectual Property Organization. How to File a Trademark Application. Retrieved October 18, 2024, from https://www.wipo.int/trademarks/en/.
- Intellectual Property India. Common Mistakes in Trademark Applications. Retrieved October 18, 2024, from https://ipindia.gov.in/.
- American Bar Association. Top Trademark Filing Mistakes and How to Avoid Them. Retrieved October 18, 2024, from https://www.americanbar.org/groups/intellectual_property_law/.
- Baldwin, J. D., & Kesselman, D. E. Trademark Law: A Practitioner’s Guide (5th ed.). Wolters Kluwer, 2021.
- Catherine Colston & Kirsty Middleton. Principles of Intellectual Property Law (4th ed. 2013).
