Building a brand is no easy task. It takes time, money, ingenuity, and persistence. It involves many thoughtfully designed brand assets such as names, designs, and slogans. As a business owner, you don’t want all your hard work in developing your brand strategy to go to waste…that’s why you must protect what you have built.
Registering and maintaining your various trademarks is the best way to protect your brand.
...BUT– if you’re unfamiliar with trademark law, it’s easy to make mistakes that can lead to your trademark application being denied—wasting your time and money.
Today, we’ll cover the 7 most common trademark mistakes we see small business owners make and how to avoid them.
1. Not conducting a thorough search
Failing to conduct a thorough search before using the name, logo, or tagline you intend to trademark could result in costly consequences if you infringe on someone else’s trademark.
Many business owners know that before trying to register their trademark, they need to run a search to make sure it’s not already in use. However, too many business owners rely on free search tools that don't notify the user of any confusingly similar marks that might obstruct their registration. While this may seem like it’s saving you money, it might not in the end.
The problem with free trademark searches is they typically only show if an identical trademark already exists. Even if there are no identical trademarks, you can still run into trouble if your trademark is “confusingly similar” to one already in use.
The United States Patent & Trademark Office (USPTO) will look at the similarities of the trademarks themselves, the types of customers, the nature of the goods or services sold under the trademark, and other relevant factors to determine whether a trademark is “confusingly similar” to another business’s trademark.
The best way to avoid this problem is to hire an experienced intellectual property attorney to do a comprehensive trademark clearance search for you. The software trademark attorneys use is much more thorough than free searches, and attorneys have the experience to analyze similar marks and help determine whether they will be an issue for your mark's registration.
Hiring an attorney to do a proper search upfront can save you a lot of time and money in the long run, and avoid unnecessary disputes.
2. Trying to trademark generic or descriptive terms
It’s common for business owners to attempt to trademark terms that aren’t unique enough to be trademarked. If a trademark is not distinctive, it will be denied by the USPTO. Generic terms cannot be trademarked, nor can descriptive terms.
If you tried to trademark the name “Buy & Sell Crafts” for your crafts business where people can buy and sell old craft tools, your application would be denied because the terms are so generic to what your business does, that they don’t distinguish your goods/services from other goods/services in the marketplace.
The best way to avoid this mistake is to choose a trademark that uses suggestive, arbitrary, or fanciful terms.
3. Choosing the wrong trademark class
When you file your trademark application, you have to choose which class your goods or services belong to. This is often the most confusing part of the application process. The USPTO divides trademarks into 45 categories, 11 for services and 34 for products.
You must select and file the correct trademark class number because choosing the wrong class can lead to your application being denied, as well as problems enforcing your trademark rights if someone infringes on them.
To avoid mistakes when selecting a trademark class and subclass, it’s important to understand that while you can restrict, narrow, or limit goods and services from your application, you can’t add or expand the scope them. For example, you could narrow “art supplies” to “paint brushes,” but you could not expand to “art classes.”
It would be wise to consult an attorney for advice on choosing the correct class number for your trademark to ensure that there are no delays in your application. If you get it wrong, you can’t change your application to correct the class, and you will lose your USPTO filing fees (which start at $250!). Ouch.
4. Not monitoring the status of your application
After doing all the necessary research and paperwork to complete their trademark application, many businesses think their work is done, and they file their application and forget about it.
This is a mistake.
The USPTO can issue an office action if there are problems with your application at any time during the process. An office action will tell you what actions you must take by what date to resolve the issues with your application.
If you fail to respond to an office action promptly, your application may be considered abandoned, and you will have to pay additional fees to reapply. Again, ouch.

To avoid this happening to you, once you’ve filed, you should check the status of your application regularly using the Trademark Status and Document Retrieval System.
5. Failing to maintain and renew your registered trademark
If you fail to maintain your trademark, you could lose your intellectual property rights, leaving your business at risk. To maintain your trademark, you must continue to use it in commerce. If you don’t, you might lose it.
It’s also important to renew your trademark on time. Maintenance documents where you declare that you're still using the mark as registered, must be filed between the fifth and sixth year, between the ninth and tenth year, and then every ten years after that.
To avoid losing your trademark rights, create a system to stay up to date with these deadlines. Put all the dates in your calendar, including paperwork prep, your filing deadline, and the actual filing deadline. Give yourself some buffer before the real deadline to make sure you can plan ahead.
6. Not policing and enforcing your trademark
The USPTO grants trademark rights but it is your responsibility as the trademark owner to enforce those rights.
If you fail to monitor and protect your trademark, it can dilute its strength, mislead your customers, lower your revenue, and damage your brand’s reputation. To make sure this doesn’t happen, you should be vigilant about enforcing your trademark by monitoring databases and marketplaces to ensure no one is using your trademark.
If you discover that someone else is using your mark, it’s important to take appropriate action to stop them immediately.
If monitoring and enforcing your trademark while trying to juggle all of the other responsibilities that come with running a business feels overwhelming, you can hire a trademark attorney to do this for you. A trademark attorney will promptly notify you of any possible infringement and help you devise an effective plan for dealing with it!
7. Trying to do everything DIY
Business owners are inherently self-sufficient, and this is an excellent quality to have, especially in the early stages of building a business when funds might be tight. In the case of trademark applications, trying to go at it alone could prove costly in the end.
As we’ve already covered, several critical legal decisions need to be made throughout the application process. If you don’t have experience navigating the United States Patent & Trademark Office, it’s easy to make mistakes. Once you file your application, there’s no going back. If you don’t do it right, you will lose time and money because you’ll have to start all over again. Time especially, with USPTO processing times at all time highs!
It would be a good idea to hire a trademark attorney to ensure your application has the best chance for success and that your business has the broadest protection possible.
In fact, the data backs it up:
A study by the University of North Carolina found that trademarks filed with the assistance of an attorney had a significantly higher success rate than DIY applications. The study revealed that 82% of all applications submitted by attorneys received preliminary approval for registration compared to only 60% of applications filed by non-attorneys.
Trademark attorneys have access to comprehensive search tools and the specialized knowledge required to interpret the search results properly, avoid risk, and provide strategic advice every step of the way.
If you want to avoid costly mistakes, book a call with us to ensure your application is filed correctly... the first time!
*Disclaimer: The above information is for general educational purposes only. Nothing in this blog article should be taken as legal advice. Reading this article does not form an attorney-client relationship with us. An attorney-client relationship is formed through a signed engagement agreement. If you would like further information, we would love to help you out! Feel free to reach out with any questions or schedule a free consultation with us through our booking calendar.
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