7 Common Trademark Mistakes That Could Lead to Infringement Litigation

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7 Common Trademark Mistakes That Could Lead to Infringement Litigation

Trademarks and service marks are used to protect a company’s branding of its products or services with words, phrases, symbols and designs. Your brands have value, and you want to protect the time and money you have spent in building them by having them registered. As you go through the trademark registration process, it is important to avoid these common trademark mistakes:

Incorrect Use of “TM” Symbol

Simply using the “TM” symbol on your brand does not confer the necessary legal protections unless you officially register the branding with the U.S. Patent and Trademark Office (USPTO). Only after you have filed an application and it has been approved can you use the “TM” symbol and benefit from its legal authority.

Not Searching for Similar Trademarks

The USPTO maintains an online database of current and cancelled or abandoned trademarks. Prior to filing a trademark application, the database should be searched to ensure that there are no conflicts.   Under trademark law, first-use has priority over later users and you may be guilty of trademark infringement if you use a mark already registered.

Failing to Use Trademark in Commerce

Prior to applying for a trademark, a company must use its trademark in commerce for specific products or services or file an intent-to-use application stating that the company plans to use the trademark in commerce later. The trademark registration process will not proceed without proof that the mark has been used in commerce or there is intent to use.

Failing to Make the Trademark Distinctive

To qualify for a trademark, the name must be distinctive. There is a spectrum of distinctiveness: arbitrary, fanciful, suggestive, descriptive, and generic. Arbitrary (e.g., “Apple”) is most distinctive while generic is not distinctive at all and is not entitled to trademark protection.

Selecting the Wrong Trademark Class

The USPTO has a long list of differing trademark classes and a company must describe in detail the products and services the trademark will be used for as well as their corresponding classes. This is not as simple as it sounds. For example, collared shirts and shirts with no collars fall into two different classes so if you want your mark to apply to both categories, you must include those classes on your application. You also need to consider product extensions when filing your application so future products are protected as well.

Failing to Monitor Application Status

After you file your trademark application with the USPTO, you may receive what is known as an office action letter notifying you of a potential problem with your application. Not responding in a timely manner will lead to your application being classified as abandoned.

Failing to Protect Your Trademark

If you don’t protect your trademark by ensuring it is not misused by others, you weaken it in the eyes of the law. You are responsible for enforcing your trademark and bringing suit against potential infringers.

Intellectual property law can be complex. Skilled representation is necessary. Williams Mestaz, L.L.P., is a law firm with decades of experience in commercial litigation, including IP infringement, business divorce, aviation, and high stakes litigation. Contact us at (602) 256-9400 and schedule a time to meet with us today.

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