What are Common Trademark Registration Mistakes?

Registering a trademark is an important part of building a brand and growing name recognition. The process of registering a trademark, however, can be a time-consuming and confusing. Without the aid of a trademark attorney, filers commonly make the same mistakes when they undertake the procedure.

Overly Narrow Goods and Services Affect Trademark Registration

When filing for a trademark registration, applicants must describe the goods and services that they intend to register with the goods and services. One common mistake that applicants make is to limit the goods and services to an overly narrow phrase or description. As such, the trademark, if approved for registration, may not cover the complete spectrum of goods and services that the applicant aims to capture.

Overly Broad Goods and Services Can Bar Registration of Trademark

Similarly, as an applicant can use too narrow of a description of goods and services, an applicant may try to file for too overly broad of a description. If the goods and services are overly broad, rejection may occur for several reasons. First, the trademark registry may reject the initial application because they believe that the description of goods and services does not match the specimen filed with the application. In other words, the applicant is filing to register a trademark with goods and services that they do not demonstrate trademark use of in the application. Another way an overly broad description may result in a rejection is if the description, as written, causes the potential trademark to overlap with an existing trademark.

Improper Specimen Supporting Trademark Application

Submitting an improper specimen is another common way that applicants may sabotage their own applications. Often, trademark applicants may file an application with their trademark drawn one way. After talks with their marketing department, however, they may eventually use their trademark in a different manner. As such, actual use of the trademark with mismatching colors, different fonts, use of shapes, etc., in a way that differs from the application may all cause the trademark application to be rejected.

Trademark Attorney Can Help Avoid Trademark Registration Mistakes

Enlisting the help of an experienced trademark attorney will help an applicant draft proper descriptions of goods and services and avoid rejection of applications due to improper specimen use. As such, an applicant can save time and money if they seek experienced intellectual property counsel.

Trademark Protection and Registration Services

Our trademark attorneys offer comprehensive trademark and brand development services including: 

• Trademark Management

• Trade Dress

• Trademark Opposition & Cancellation Proceedings

• Trademark Registration & Maintenance

• Trademark Licensing

• Trademark Infringement Defense

• Trademark Protection

• Right of Publicity

• Trademark Portfolio Enforcement

• Cybersquatting

• UDRP Domain Name Proceedings

• Trademark Indemnity & Indemnification Agreements

See our Trademark Registration Process for an overview of the trademark process from a search through registration of a trademark.  See also our Trademark Cost & Pricing Options for a discussion of how much a trademark costs and how we bill for our services.

See our Legal FAQs page for the answers to more intellectual property law questions.

Klemchuk PLLC is a leading intellectual property law firm focusing on litigation, anti-counterfeiting, trademarks, patents, and business law. We help clients protect innovation and increase market share through investments in IP.

This article has been provided for informational purposes only and is not intended and should not be construed to constitute legal advice. Please consult your attorneys in connection with any fact-specific situation under federal law and the applicable state or local laws that may impose additional obligations on you and your company. © 2023 Klemchuk PLLC