Registering a trademark is generally good for your business. Trademarks are valuable and increase in value over time. While trademarks have some legal protection just by existing and being used, those legal protections are significantly enhanced by registering the trademark with the US Patent and Trademark Office (“USPTO”). Registration is accomplished by filing an application with the USPTO. While it is possible to register a trademark without a lawyer, it is much preferable to use experienced trademark attorneys — like those at Revision Legal. If you are searching for “the best trademark attorneys,” call us at 231-714-0100 or 855-473-8474. Our costs are reasonable, and using a top-rated trademark Law Firm avoids the many mistakes that can be made when completing and filing the application.

Mistakes will result in the application being denied, numerous Office Actions from the Examining, or the need to amend the application. The other danger is that the application will be approved, but that because of mistakes, the registration does not fully protect your trademark with all of the products and/or services with which you are using the trademark. Below are three of the biggest mistakes to avoid when completing your trademark application.

Choosing the Wrong Class or Subclass or Not Choosing Enough Classes

Every trademark must be associated with at least one trademark Class and subclass. The Class or Classes that are selected create the “boundaries” of the legal protections that are provided by registration. Select the wrong Class and/or subclass, then, essentially, your trademark — even if registered — will offer no extra legal protections. Moreover, if you do not select ALL the correct Classes, then there is a danger that your trademark will be legally under-protected.

Selecting the correct Class (or Classes) can be complicated because many goods and services will fall into different Classes depending on use. For example, salt has at least two Classes — Class 030 for table salt used as/in food and Class 001 for salt used as a chemical for de-icing and for something like food preservation. Selecting the correct subclass can also be complicated. De-icing salt and salt-as-food preservative have two different subclass numbers.

Failing to Submit Proper Specimens of Use

To register a trademark, an applicant must prove that the trademark is being used in commerce. Or, if an intent-to-use application is filed, then later in the process, the applicant must submit specimens of use before the registration can be finalized. In either case, a mistake that is often made is submitting improper specimens of use. For example, showing a screenshot of your trademark on a website page is, without more, typically NOT a proper specimen of use.

Failing to Properly Disclaim

Another common error to avoid is failing to properly disclaim. Generally, it is not possible to trademark common words like “big,” “green,” or “farm.” Likewise, if your proposed trademark is a logo or design, it is not possible to trademark common shapes and marks like a triangle, circle, or square. If your proposed trademark contains non-trademarkable elements, your trademark registration will be denied unless you have properly disclaimed an intent to trademark the non-trademarkable elements.

Contact the Trademark Attorneys at Revision Legal For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.

Common Trademark Application Mistakes That Kill Registrations — and How to Avoid Them

The USPTO rejects a significant percentage of trademark applications, and many of those rejections are avoidable. Office Actions — the USPTO’s formal communication of problems with an application — cost time and money to respond to, and a Final Office Action can end the registration attempt entirely. Understanding the most common legal and procedural mistakes before you file is the most efficient way to reach registration.

Filing Without a Trademark Clearance Search

The single most consequential mistake is filing a trademark application without first conducting a comprehensive trademark clearance search. Under 15 U.S.C. § 1052(d), the USPTO cannot register a trademark that is confusingly similar to an already existing registered trademark used in connection with the same or related goods and services. An examining attorney who identifies a prior mark that creates a likelihood of confusion will issue an Office Action refusing registration — after the application fee has already been paid and is not refundable.

A proper clearance search encompasses more than a quick search of the USPTO’s Trademark Electronic Search System (TESS). It should include state trademark registrations, common law marks in use in the marketplace, domain name registrations, social media presence, and industry-specific databases. The likelihood of confusion analysis considers mark similarity, goods and services similarity, the sophistication of consumers in the relevant market, the channels of trade, and other factors articulated in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). Without a full search, the applicant is flying blind into this analysis.

Selecting the Wrong Goods and Services Identification

The identification of goods and services in a trademark application has permanent legal consequences. The trademark registration, if it issues, will protect the mark only with respect to the goods and services identified. An identification that is too narrow leaves significant commercial uses unprotected. An identification that is too vague will trigger an Office Action requiring amendment — and amendments cannot broaden the scope beyond what was originally covered by the application as filed.

The USPTO requires that goods and services be identified with “particularity.” Vague terms like “business services,” “consulting,” or “computer software” without further specification are routinely refused. The USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual) provides thousands of approved descriptions that satisfy the particularity requirement. Applicants who draft custom descriptions without reference to the ID Manual frequently receive Office Actions that could have been avoided.

Perhaps more serious is the mistake of under-covering the classes of goods or services. A restaurant owner who registers only for “restaurant services” in Class 43 but later begins selling packaged food products in interstate commerce under the same mark is not protected against a competitor who registers the same mark for packaged food goods in Class 29 or Class 30. Anticipating future business expansion at the time of the initial application — and filing in all relevant classes from the start — prevents this gap.

Submitting Deficient Specimens of Use

For a use-based application under 15 U.S.C. § 1051(a), the applicant must submit specimens demonstrating that the trademark is actually being used in commerce with the identified goods and services. Specimens are not just any image of the mark — they must show the mark being used in connection with the sale of the goods or services in the specific way required by the Trademark Act.

For goods, the specimen must show the mark on the goods themselves, on product packaging, on a tag or label, or on a point-of-sale display that associates the mark with the goods. A simple screenshot of a website showing the mark in a banner header, without any visible connection to actual goods being offered for sale at that location, is generally not an acceptable specimen for goods. The USPTO regularly issues refusals based on website screenshots that fail to show the mark in direct association with the goods available for purchase.

For services, the specimen must show the mark in use in connection with the rendering of the services — advertising materials, service menus, signage at the service location, or similar. The key difference from goods specimens is that advertising evidence can be acceptable for service marks. However, the specimen must clearly connect the mark to specific services being offered, not just display the mark in isolation.

Failing to Respond to Office Actions Within Deadlines

Every Office Action from the USPTO has a mandatory response deadline. Under current USPTO rules, the initial response deadline is three months from the date of the Office Action, with an available extension to six months upon payment of an extension fee. Failure to respond within the deadline — or within the extension period — results in the application being deemed abandoned. An abandoned application loses its priority date, and the applicant must start over with a new filing and new fees.

Office Actions can be deceptively straightforward in their description of the problem, while the legally correct response is nuanced. A refusal based on likelihood of confusion, for example, requires more than a statement that your mark is different — it requires a legal argument addressing each of the du Pont factors with reference to specific evidence. An inadequate response to a non-final Office Action can lead to a Final Office Action, which limits the available responses to a request for reconsideration and an appeal to the Trademark Trial and Appeal Board (TTAB). TTAB appeals are expensive and time-consuming.

Overlooking the Disclaimer Requirement

Many proposed trademarks contain elements that cannot be registered as trademarks independently — generic terms, descriptive terms, common geometric shapes, common words, or geographic designations. When a proposed trademark contains such elements combined with distinctive elements, the USPTO requires the applicant to disclaim the non-registrable elements. A disclaimer is a statement in the application acknowledging that the applicant claims no independent right in a specific term or design element apart from the mark as shown.

Failure to include required disclaimers when the USPTO requests them can result in refusal of the entire application. More subtly, failing to include a disclaimer that should have been required — but was not caught by the examining attorney — can create problems later if the registration is challenged or if the trademark owner tries to enforce the mark against a competitor using only the non-distinctive element.

The trademark attorneys at Revision Legal handle applications from clearance search through registration, including responding to Office Actions, navigating opposition proceedings, and avoiding the mistakes described above. If you want your trademark application to succeed — and to provide real protection when it does — contact us before you file.