in: Legal
by: Anthony Verna
Many business owners believe they can save money by filing their own Federal trademark applications. But what they do not know are the pitfalls in filing the federal trademark application themselves. Here are 5 common mistakes I've seen made by small businesses when filing a trademark application without a lawyer.
SEE ALSO: The Benefit to Hiring a Laywer When Filing a Trademark Application
Incorrect Trademark.
Yes, this might seem very basic – but many times, business owners register what they think their mark is, instead of registering the mark that the business is using.
Lack of Due Diligence
Due diligence is important. In a world where the research tools are multitudinous, it is imperative that a trademark applicant perform a trademark search and find similar registrations, similar applications, similar common-law marks, and similar domain names. The lack of due diligence may cause an applicant to waste a lot of time in filing, and then being sued for the trademark filing.
Incorrect Owner
People and corporations are different legal entities. Very often, a small business owner puts himself or herself as the owner of the trademark when it is the corporation who owns and uses the trademark.
Incorrect Date of First Use
What is the date of first use? It is the date that the trademark was used on any material related to the goods or services your company sells.
Incorrect Description of the Goods and Services
As a part of filing for a Federal trademark, the application must list the goods and services that a mark represents. This list must be complete and also listed in the correct classification. If the mark is not used in conjunction with any of the goods or services listed, then the registration is open to attack. A trademark owner also must show that all goods and services listed in the application are in use at the time of registration and also 5 years after the registration.
If any of these items in a trademark application is incorrect, then the trademark application or registration is subject to cancellation.
“Fraud Upon the United States Patent and Trademark Office” can be triggered by even an innocent mistake. If a trademark application is “fraudulent,” the trademark application or registration can be cancelled.
