So you think that you have the perfect idea for a brand new business, invention, book, film, or another concept that you’re sure is destined for success. In fact, you’re so sure that it’s such an obvious winner that you rush right through the trademarking process just to make sure that no one else takes that idea first. Then, a few weeks later, you find your application has run afoul of some issues and you’re shocked.
But should you be? After all, trademark and copyright law are filled with little tripwires that, even if you’re careful, can accidentally trip up your application. Rush through the process and you’re practically doomed. As such, let’s take a step back and review five of the most toxic, all too easily avoidable trademark mistakes.
Don’t Be Generic
One of the most important rules in trademark law is to be as specific as possible.
To a certain extent, much of copyright and trademark law exists on a subjective basis. In order for something to be considered for copyright and trademark protection, it needs to be approved by officers who judge whether or not it is “distinct” enough. While this is subjective on some level, the more broad or generic-sounding your suggestion is the worse your chances.
Take Ohio State University’s failed attempt to trademark the word “the” in its famous declaration of itself as “The” Ohio State University. While adding “The” is a popular way of referring to the university, especially for sports alumni in the NFL and NBA, needless to say, USPTO found trademarking the word “The” just a little too generic and broad a request.
If one of the NCAA’s most powerful schools can’t get something that generic approved for a trademark, chances are you won’t be able to either.
Your trademark needs to be for a name that’s distinct as possible and not just trademarking things, concepts, or words and phrases that we use every day — such as “the.”
Watch Your Language
Has that last section and the quest for a distinct enough phrase gotten you so steamed that, instead of “the,” you’re ready to send the patent office some four-letter words? Well, you shouldn’t. Not only is harassing or abusing federal employees a bad idea but it’d be a fruitless endeavor as well.
Regulations against “vulgar” language in trademark applications still exist and are still enforced. Even if you include vulgar language in a “playful” way rather than as an act of anger, it’s almost certain to be shot down by the USPTO.
Use the Right Symbol
Even people who have never had to take a deep dive into copyright and trademark law know the “TM” symbol to mean “trademark.” However, what you may not know is that this is actually a relatively weak trademark symbol in terms of its legal effectiveness. It only applies to the limits of the geographical area in which your company actively operates. That makes it very easy for another company to file for a trademark application outside those boundaries, undermining the whole raison d’etre for your trademark claim in the first place.
For example, if you register a “TM” trademark in New York and someone starts using the same copyrighted material in Los Angeles (or London, for that matter) the “TM” alone likely won’t protect your rights.
To better protect your intellectual properties and trademarked goods, you’ll want to register with the US Patent and Trademark Office (USPTO). This will give you the right to use the “R” trademark, as in “registered trademark,” which offers far stronger and more broadly-reaching trademark protection. Here’s an easy trademark symbol guide, that explains the hows and whys of each symbol in layman terms.
Stay on Top of Things
It can be easy to feel overwhelmed by the massive burden of paperwork that can come with a trademark application. When it’s finally all submitted, therefore, it can be incredibly tempting to just consider everything done and move on.
However, there’s every chance that your application is less of an end than a beginning. If you receive an office action notice from the USPTO, it means that there was a problem with your application that needs to be resolved or else it can’t go through. Ignoring this means the failure of your application so you need to stay on top of these notices and get the underlying issue resolved as quickly as possible.
Even before you get to that point, you need to do your due diligence and review your situation as closely as possible to try to avoid these kinds of office action stumbling blocks. Check the PTO database to see if your trademark is already registered. However, you should also note that the PTO database does not cover every trademark so you’ll need to do more research than just a quick browse through its listings.
Take the time to search trademark registries, Internet domain names, and industry publications as well.
Properly Enforce Your Trademark
Let’s say that you have finally completed the rigamarole of getting a trademark and you feel that someone has infringed upon it. That may be the case; however, if you sit around waiting for the USPTO or other body to defend your trademark on your behalf, you’ll be sorely disappointed. The responsibility falls to the patent or trademark owner to file an infringement claim.
What a trademark essentially does, in this case, is give you the legal grounds to file an infringement claim to enforce your trademark and make it actually mean something. While your trademark protection can give you the grounds to win in court, independent bodies do not do that on your behalf.
Rather, you will need someone who is copyright, patent, and trademark expert to determine if infringement has occurred and, if so, to quarterback your case to victory. Chances are that you as a layperson won’t be able to do this on your own so you’ll need to hire a lawyer who specializes in the field to assist you.
By avoiding these all-too-common copyright and trademark mistakes, you can focus on translating your ideas into something worthy of the trouble of trademarking and selling them.
registered trademark concept -DepositPhotos