There are nine common mistakes trademark owners should avoid when they select or begin using their trademark.
Individuals, small businesses and even large corporations are often guilty of making trademark mistakes that are completely avoidable. The costs of committing the mistakes below can lead to costly litigation, loss of trademark rights or even force a company to go out of business. When selecting a trademark and using it in commerce, avoid these nine common pitfalls.
Selecting a Generic Trademark
Before a trademark is even used, the trademark owner should avoid selecting a generic trademark. A generic trademark is the commonly used name for a product or service. For example, beer is generic for beer products and roofing company is generic for, well, a roofing company. Generic trademarks cannot receive trademark protection under common law trademark rights and cannot be registered at the United States Patent and Trademark Office (USPTO).
Another important trademark concept for trademark owners is to never use their trademark as a noun or verb. When a trademark becomes synonymous with a good or service, it is at risk of becoming generic. Former trademark that became generic include TRAMPOLINE, ASPIRIN, and YO-YO. To avoid making your trademark generic, remember to always use it as an adjetive or adverb and not a noun or verb.
Graveyard of once registered trademarks that become generic
Learn more about trademark distinctiveness or generic trademarks in our full blog posts on the topics (by clicking the linked words).
Failure to Conduct a Trademark Search
Before a company adopts a trademark (or company name), it should conduct a trademark search to make sure no other entity is already using the trademark. Trademark searches are important for a couple of reasons. First off, if a company adopts a trademark already being used by another business, they are at risk of having to defend themselves in a costly trademark litigation case. They also may be forced to stop using the trademark and they will lose any goodwill they developed under the trademark.
A related issue is that companies, and individuals within companies, often get emotionally invested in a name before a trademark search is conducted and refuse to change to a new trademark. There is not point in even conducting a trademark search if the company will refuse to abandon its plans to use a mark even if the search reveals some problematic results. The best practice is to avoid becoming emotionally attached to a trademark before conducting a trademark search.
Discover more about the importance of conducting trademark searches before using a trademark or filing a trademark application in our detailed blog post.
Not Using a Trademark Symbol or Using the Wrong One
When to use trademark symbols and what trademark symbols to use often confuse businesses. Businesses can choose from ®, ™, or SM. Trademark symbols serve a couple of important purposes. The most important purpose of correctly using trademark symbols to to put competitors on notice that you consider yourself the owner of a trademark and they should not adopt any similar trademark.
Additionally, trademark symbols add legitimacy in the eyes of consumers. Even if consumers do not know the ® symbol means the trademark is registered with the USPTO, they view it as a sign the company can be trusted.
The simple explanation of when to use each symbol is only use the ® symbol after a registered mark, use the ™ marking after a trademark that is only protected by common law and use SM after a service mark that is only protected by common law. For a more detailed breakdown of when to use what trademark symbol, check out our full blog on trademark marking.
Ignoring Your Most Important Trademark(s)
Many trademark owners, especially small companies, think they only need to protect their company name. Although it is very important for companies to protect their company name and file a trademark application for it, it is also important to protect their other valuable trademarks.
Trademarks, beside the company name, that are also valuable include slogans or taglines and the names of best selling products. For example, McDonald’s most valuable trademark is their company name. But their slogan, IM LOVIN’ IT, and their best selling product, the BIG MAC, are also very important trademarks that the company protects with trademark registrations.
Learn more about when it is time to file a trademark application for your company name and your other important trademarks in our blog post on the topic.
Waiting to File a Federal Trademark Application
Filing a trademark application is important for the purpose of trademark priority. After a trademark is registered with the USPTO, the date it is filed will be the priority date assigned to the trademark for use across the United States. Establishing a nationwide priority date is important because under common law trademark rights, trademark owners can only enforce their trademark rights where they are being used.
For example, an apparel company called Cactus Clothing sells clothing in the southwest of the country with the intention to expand nationwide in several years can only enforce its trademark, CACTUS CLOTHING in the southwest. This can become a problem if a company in Florida begins using the trademark CACTUS CLOTHING. The Arizona company will not be able to stop the Florida company from using the trademark AND will not be able to expand their business into Florida in the future.
To learn more about why filing a trademark application a year early rather than a day late is really important, read our blog about trademark priority.
Not Enforcing Trademark Rights
It is important to monitor the market place for any competitors or businesses in related industries using the same or a confusingly similar trademark and enforcing your trademark rights against them. Enforcement efforts can include making a call requesting they stop using the infringing trademark, sending cease and desist letters, or filing an Opposition at the USPTO or a trademark lawsuit in federal court.
The reason why it is important to enforce trademark rights is because if a company fails to enforce their rights, they risk completely losing the ability to enforce their trademark rights. The more people that use a similar trademark, the more evidence there is that the field is already crowded for that trademark and therefore no one gets a claim to the trademark. In other words, if you do not use your trademark rights, you lose your trademark rights.
Failing to Secure Domain Address or Social Media Pages
Many trademark owners wait to create their social media pages or secure the web address of their trademarks and a third party jumps in and snags them. It is especially important to secure the URL and social media pages of the company name.
There is a whole army of internet cybersquatters who register domain names of any trademarks or company names they come across in hopes of making the owner pay a lot of money to them to recover the domain name. It is best practice to get ahead of the issue before the cybersquatters beat you to the punch.
Not Using the Trademark in Commerce
Trademark rights in the U.S. are only enforceable of the trademark is being used in commerce. A trademark is used in commerce in connection with products when the product, product packaging, or point of sale display (online or in-store) has the trademark on it. Service marks are considered used in commerce where the trademark owner advertises the services by using the mark in newspapers, online, on billboards or store front signage and more.
Trademark owners will lose their trademark rights if they stop using their mark, even if they have a trademark registration. In addition, trademark owners cannot even get a trademark registration if they are not using their mark in commerce. Learn more about what is and is not acceptable use of a mark in commerce in our detailed post on the topic here.
Not Hiring a Trademark Attorney
The last common mistake trademark owners make is not hiring a trademark attorney experienced with the ins and outs of trademark law. Trademark attorneys will conduct better trademark searches, explain any potential issues filing a trademark application or enforcing a trademark and more. Studies show that trademark owners represented by a trademark lawyer are much more likely to succeed in receiving a trademark registration. In addition, trademark attorneys are specialized and have more individual knowledge in the field than general practice attorneys.
Another related issue is trademark owners seek help from online websites to file trademark applications. Many of these websites do not actually help conduct a trademark search or prepare and file the trademark application. They just instruct the trademark owner how to do it. Several Granite Trademark Services clients came to us after wasting money and time with these websites, commonly referred to as "trademark mills." Do not be fooled by there low prices. They do not offer good service and often do not even have licensed attorneys involved in the process.
Do you have any questions about trademark mistakes or trademarks in general? Feel free to contact us for a Free Trademark Consultation today!