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Trademark Prosecution: Avoiding Common Mistakes

Trademark Prosecution: Avoiding Common Mistakes

by | Aug 3, 2022 | Brand Protection 101, US Registration, Warning Signs, Infringement, Education

Trademark prosecution is the process of filing a trademark application and verifying that it meets all the necessary requirements. The process can be complex, and there are a number of common trademark prosecution mistakes that applicants make. These mistakes can delay the registration process or even lead to the trademark being rejected.

By understanding the basics of trademark prosecution and avoiding common mistakes, the  process can be much smoother. In this blog post, we will cover four of the most common mistakes made during trademark prosecution so that you can avoid them in your own application. The 4 most common mistakes are:

1. Not Investigating Similar Trademarks

2. Filing an Incomplete Application

3. Failing to Respond to Office Actions

4. Abandoning the Trademark Application

Not Investigating Similar Trademarks

One of the most common mistakes made during trademark prosecution is failing to investigate similar trademarks. Before filing a trademark application, it is important to search for similar trademarks that have already been registered. This can be done by searching the USPTO trademark database.

If you find a similar trademark that has been registered, you may still be able to use your trademark if it is used for different goods or services. However, if the trademark is used for the same or similar goods or services, you may not be able to use your trademark.

Filing an Incomplete Application

Another common mistake made during trademark prosecution is failing to file a complete trademark application. A trademark application must include the following:

– The name and address of the applicant

– A list of the goods or services for which the trademark will be used

– A drawing of the trademark

If an applicant fails to include all of this information, the USPTO may reject the application outright.

Failing to Respond to Office Actions

After an application is filed, the trademark examiner will conduct a search of existing trademarks to make sure that the proposed trademark is not too similar to any other mark. If the trademark examiner finds any potential conflicts, he or she will issue an office action.

An office action is a written notification from the USPTO that includes a list of any objections to the trademark application. The trademark examiner will also include instructions on how to respond to the office action.

If an applicant fails to respond to an office action within the specified time period, the trademark application will be considered abandoned and will be refused.

Not all office actions are negative, however. In some cases, the trademark examiner may issue a “non-final” office action, which simply means that the trademark application is still being reviewed and that the applicant should respond to any objections raised by the trademark examiner.

Once an applicant responds to an office action, the trademark examiner will review the response and may issue a “final” office action, refusing the trademark registration. If the trademark examiner issues a final refusal, the applicant may appeal the decision to the Trademark Trial and Appeal Board.

Abandoning the Trademark Application

It is possible to abandon a trademark application if you no longer wish to pursue it. This may be because you have decided not to use the trademark after all. Potentially it is because you made a mistake in the application and would like to start over. In either case, you will need to notify the trademark office in writing that you are abandoning the application. Once your request is processed, the trademark application will be abandoned and you will not be able to revive it. If you later decide that you do want to trademark the original mark, you will need to file a new application and start the process anew.

It is important to note that trademark applicants should not attempt to file a trademark application without the assistance of an experienced trademark attorney. The trademark prosecution process is complex. Trademark attorneys can help navigate the process to increase the chances of a successful trademark registration.

How Initiating Protection Can Help

If you have any questions about trademark prosecution, please contact Initiating Protection at 678.965.3268. We provide brand protection services to businesses of all sizes, and during all portions of a brand’s life cycle. We accomplish this by creating a personal connection with clients, using both modern software and old-fashioned relationships

(This article is provided for informational purposes only and is not legal advice. For legal advice, please contact us for additional help).

The Cost of Picking a Bad Brand

The Cost of Picking a Bad Brand

by | Jul 19, 2022 | Brand Protection 101, US Registration, Infringement, Education

Many people don’t realize that using a brand can lead to liability.  Specifically, you can be sued by someone who is already using a similar brand.  Costs related to this could be anywhere from $5000 to negotiate a resolution which would likely limit your use of your brand, to $10,000 to engage in a back and forth with the opposing attorney, all the way up to $500,000+ to fight an infringement lawsuit.  Further, if the court finds you have been using your brand in bad faith, it can require that you pay the other side three times your profits and pay for their legal fees. You can greatly reduce the risk that these costs will blindside you if you get my Brand Health Assessment, which is available for $275 for a limited time.

Kathy started Jana Bananas last year.  She registered this company with the state and the IRS, had a marketing firm create a logo and even acquired the .net web address.  She didn’t realize that the company that owned the .com web address could still sue her, and those legal fees drove her out of business.  Don’t let your friend slip up.  Lawsuits can destroy the fruits of her labor! Tell her about my very appealing $275 service.

Special Price on Brand Health Assessment

Special Price on Brand Health Assessment

by | Jul 19, 2022 | Other

Your company name is one of the most important assets your company has. It is likely the #1 way customers find you. While this is good news, there is a real risk that it can change; that this tremendous asset can destroy your company. Big businesses usually manage this risk by hiring expensive law firms to protect them. Meanwhile, small businesses typically cross their fingers hoping that their brands generate sales and not catastrophes.

Small businesses deserve better!

I left the high-priced firms last year to establish my own firm: Initiating Protection. My law firm is dedicated to helping small businesses with brand protection. And now, for a limited time, we have a great offer for these businesses.

Initiating Protection is offering a Brand Health Assessment for only $275 to a limited number of clients. This written assessment will address the following:

– What risk does your brand pose to your business?

– What specific steps should you take to increase your rights in your brand?

– How strong is your brand?

For an additional $150 an attorney will discuss the assessment with you and answer any questions you may have. Contact us today to see how you can turn your brand from a risk into a reward!

Spectrum of Distinctiveness – Fanciful Brands

Spectrum of Distinctiveness – Fanciful Brands

by | Jul 13, 2022 | Brand Protection 101, US Registration, Education, Other

It’s summertime!  And we all know what that means—we celebrate the spectrum of distinctiveness!  Today I honor my client David E.; he is my only client with a fanciful name.  A fanciful brand is either a made-up term or an archaic term that is out of common usage.  These brands are the highest category on the spectrum of distinctiveness which means they have very broad rights.

It is very common to see these terms used for pharmaceuticals and hi tech, and the client who will take my advice.  These terms are initially disfavored by marketers because the brand doesn’t tell the public what the goods are, however marketers love to get their hands on these ultra-unique brands once the public knows what the brand is.

David is smart in many ways.  Right now he is famous throughout Cobb County and Metro Atlanta, but one day his company will be in the Fortune 500. When that day comes, he will have no problem defending his brand from the companies that will try to trade off his goodwill.  Don’t you think your company will be a success?  Doesn’t it deserve a highly distinctive brand too?

Spectrum of Distinctiveness – Arbitrary Brands

Spectrum of Distinctiveness – Arbitrary Brands

by | Jul 13, 2022 | Brand Protection 101, US Registration, Education, Other

It’s summertime!  And we all know what that means—we celebrate the spectrum of distinctiveness!  Of course, this is the concept that you can’t claim exclusive branding rights in words used in their normal meaning.  Our stop today is at arbitrary brands.  An arbitrary brand is a word that is recognized generally by the public, but it has a meaning wholly unrelated to the underlying goods or services.  A well-known example is “Apple” for computers.

My latest client asked if I would search his brand “Charger.”  I said, “please don’t tell me you want to use this brand with sort of computer product.”  I was relieved to hear it was for kids’ wooden toy, which likely made it an arbitrary brand.

Your neighbor asked you to help her pick a name for her new car parts store in Marietta.  You’ve heard multiple suggestions that are puns on “on the road” and “maintenance.”  Propose that she do what the big companies do— pick a highly distinctive name.  The name will turn heads and will be very easy to defend if the need should arise.