Seven trademark mistakes that you do not want to make and they are commonly made on trademark applications
I’ve seen them multiple times stay tuned till the very end because I’m going to give you a bonus so actually eight trademark mistakes you don’t want to make. I just want to let you know that if you already know you need a deep dive walkthrough of how to file a trademark application make sure you grab a seat in the free master class that I am giving limited spots only scroll down into the description below let’s get into it now
Mistake number 1: Who is going to be owning the trademark application
Is it going to be you? is it going to be your business? is it going to be you and a business partner? are you owning this application individually ? do you have a corporation? do you want this application to be owned by you? trust I have worked with applicants who have their IP assets amongst other assets inside of a trust and they want the trust to own it so this is going to be very important and critical in moving forward you know can this be changed later on well sure it can so is it actually a mistake take well it’s not a detrimental mistake if you designate you know one person and then you want to switch it to somebody else or you want to switch it to the trust but that is one of the mistakes that business owners make is indicating who is going to own the application so if you already know from the get-go that your business is going to own it which is what I recommend then you should have your business own it but everybody’s circumstances are different so send me an email down below we’ll make sure that we get the owner right on your trademark application.
Number 2 when you submit an application you have to choose between filing an application to protect the words or to protect the logo
It is very difficult to protect both in one if you want to know how you can protect both in one make sure to catch that video right here that’s the closest you’re gonna get to protecting both in one but for purposes of this blogpost understand that you are actually making a selection for either protecting the words or protecting the logo so if you are protecting a logo then the trademark application requires you to upload a picture of what it is that you’re going to be protecting so if you have a really pretty logo that you’ve invested a lot of time and money you want to make sure that you upload the design that you are going to be using from this moment forward you don’t want to be uploading something that can potentially be changed maybe you want to tweak the eyelash on one of the mermaids maybe you want to tweak how many lines appear in your basketball maybe you want to tweak the font a little bit maybe you want more curvature in your lines so if you do decide that you want to make changes in the future then this is a mistake because once you change the logo from what you submit in the application then you’re going to lose protection in your application and that’s not really the reason why you filed right I mean you’re filing because you want to maintain maintain protection you don’t want to lose protection or make yourself susceptible to losing protection so so you want to make sure that whatever it is that you upload to your application is in fact what you are going to use from here on out for the lifetime of the brand unless you know that you’re going to be tweaking it and you’re aware that you’re going to be losing protection then by all means make whatever changes you want now if you want to learn more about how to protect a logo with a trademark application you have to watch this video right here because I go into way more detail than I could cover in this blogpost but make sure that you submit the proper picture that you’re in fact going to be using for the lifetime of your brand if you want to maintain protection so let’s move on to one of the biggest mistakes that trademark applicants can make and that revolves around classes so classes are numbered right I mean there are a variety of classes that are divided between goods and services so
Number 3: If you have a good that you’re selling a physical item then you are going to be referencing these classes and if you have services that you are offering then you’re going to be referencing the these classes
Right here many times applicants will select a particular number that doesn’t exactly match the description so when it comes to a class you’re going to have to select a number like I already talked about either from here or from here and you’re also going to have to put in a description into the text box or select a description from a pre-approved list that the trademark application will allow you to choose from so if you create a mismatch between the number and the description then you’re going to create an issue for yourself and it’s something that’s going to have to be fixed later on now is this one of those issues that is going to be detrimental to your application now this is a tough one to answer why is it so tough? well because if an applicant makes a mistake on a class the USPTO has already told us that we can fix Class errors within certain limitations.
So in other words if you make the type of mistake that’s outside of those limitations then no you are screwed you’re only going to be able to work within the parameters of what you have already included in your application so in other words you can’t add additional terms you cannot expand the class so that’s why it’s important to get the class right I would say that this is one of those that can be detrimental to your application so you’ll lose money you’ll lose time you’ll get really frustrated you’ll get really angry because the USPTO does not offer refunds so can you go back and fix it? well it’s gonna depend on how badly you messed up and it’s going to depend on the specifics of your application so it’s really hard to apply like a bright line rule here again and it just depends on how badly you made a mistake in this section but I would say that more times than not it can be detrimental to your application.
So send me an email I’ll make sure that we get this application right the next biggest mistake that trademark applicants make revolves around something called a specimen?
A specimen is the proof of use it is the Trademark Office wants to see how you are using your trademark in Commerce now lots of applicants like to choose you know whatever looks good to them and whatever they think in their mind meets the criteria that the USPTO wants to see but they have their own set of guidelines as to what you should be submitting depending on whether you’re submitting proof for goods or whether you’re submitting proof for services so this can be a really tricky one especially for people who are filing trademarks in clothing brands and if you want to know why? make sure you catch that video right there because I go into more detail for clothing brand registrations so is submitting an improper proof of use a detrimental mistake to your application in and luckily unfortunately for you the answer is no it is not detrimental but as I sit here and think about all these pointers that I’ve already given you thus far if you think to yourself well this isn’t detrimental this isn’t detrimental to my application oh I could just send something in and fix it later then you’re going to start adding up these mistakes and you’re going to receive office actions that might seem really overwhelming to you um because the print is this small sometimes the office actions come in multiple pages and if you just do things right from the gecko you could have a really smooth sailing Journey as I have had many times so scroll down into the description if you want to get close to having a smooth sailing application because I know that I can help you so does the USPTO want you to show them everything under the sun do they want to see hang tags do they want to see marketing materials your website do they want to see the email that you sent to your potential customers or consumers applicants tend to get carried away in this section sometimes by providing more than is necessary but you also have to provide an enough for them to actually see that you’re using this trademark in Commerce so there are really good proofs that I continue to use over and over that I find to be successful.
If you want to learn more about this process make sure you scroll down for the free master class or you can work with me directly and I’ll submit this for you so in this next tip it is going to be important that you take into account when you actually started selling your goods or selling your services it is not enough to just plug in whatever date you think it might have been it is critical to this section that you
Number 4: Know when you started selling your products or your services in Commerce
So when the application refers to what is your data first use they should have like an asterisk there or something in italics that says in Commerce because that’s what they actually mean what is your first date of use in Commerce and then what is your first date of use anywhere so these for some people can be the same date and for other people it might be two different dates but it is important let’s say if you get into litigation down the road you know the opposing council is going to use these dates of first use as extremely critical information to who actually owns this trademark because if you said that you were using it
Consider this scenario on January 1st of 2020 but you actually didn’t start using it until July 1st of 2020 then they are going to say well hey there was a period of seven months there that you actually weren’t using your trademark so and we did start using it in January so actually we own it you don’t so that’s why it’s important to understand that dates of first use are not something to guess at you don’t want to guess when you started using something if you could be accurate then please by all means be as accurate as possible the USPTO isn’t going to double check.
You know when you created your website it’s not gonna ask you for actual receipts of when you made your first sale but it is going to be important in litigation if God forbid you ever enter that situation then yeah you will actually have to provide receipts and so you want to make sure that you get this part right because it’ll make you look pretty bad if you just start plugging in whatever numbers just so that you can get done with the application.
Please don’t do that so I told you that I was going to give you a bonus and in this bonus I want to tell you that this is one big mistake that you can make and it comes even before the trademark application so are you ready I want to let you know that choosing a trademark attorney is going to be so critical to the success the make or break of this journey for you if you choose a trademark attorney that you really don’t like whose style you don’t like their Vibe is not the same as yours or the vibe is off then maybe they’re not the trademark attorney for you if you’re more traditional and you expect your attorney to offer information to you in a certain type of way then you really want to think about well
- How is my attorney going to deliver this information to me?
- Do I prefer a younger attorney?
- Do I prefer somebody who’s really experienced?
Then also so young do I prefer an older person? things to consider are how many successful applications have they had are they providing free information on a consistent basis even if they are providing information on a consistent basis you know do they strictly focus on trademark work where they know trademark applications like the back of their hand or do they start offering a bunch of other services have they experienced my situation many times before is my trademark attorney accessible is my attorney delivering the information in a way that’s digestible can I understand them are they speaking over me am I weighing over my head do I understand what they have communicated even after the conversation is over I want you and I to have a really good report I like having great clients you know why because then I get to have great business relationships even after a successful trademark registration
I like having open lines of communication and I like working with creative business owners because I like to see their upward climb towards success so for those of you wondering does Marcella even speak a different language well I did grow up speaking Spanish I also took French in high school and I did take Portuguese in college so which of these factors that I mentioned is the most important to you tell me in the comments below I want to make sure that I am here to serve you and I want to make sure that you acquire a trademark registration that’s why you’re here watching this video and watching this channel so don’t forget to catch this video right here which I already mentioned go back and watch this video if you have to take notes it’s especially if you are just starting your journey again catch my free master class with limited spots down below I want to make sure you are successful the first time around.