With the videos and descriptions available at the U.S. Patent and Trademark Office (USPTO) at www.uspto.gov, it can seem that applying to register a trademark on the federal register is so straightforward that anyone can do it without much thought. You might even wonder why a trademark lawyer is needed. Maybe you have even considered using a service like LegalZoom that fills out the forms for a small fee.
But in truth, the seeming ease of the process is deceiving, because it is easy to make mistakes when filing a trademark application, some of which could significantly lessen your legal rights and even get your trademark cancelled.
Some things can be fixed—trademark attorneys regularly amend applications to comply with the requirements of a trademark examiner during the process of getting a registration. But a few things cannot be changed. If they are wrong, you’ll have to start the process over and pay another fee to the government. Watch particularly for problems with these items:
Who is the Owner?
The owner that you list on your trademark application must be the person or legal entity that is actually selling goods or services under the trademark (or that intents to do so). If you list the wrong owner, the application is invalid. In practice, that means that even if you get a trademark registration, someone years down the road can still attack that registration because it was filed in the name of the wrong person or company and it will be cancelled. A flaw in the original ownership cannot be fixed—a new application has to be filed. You don’t want to be doing that in the middle of a dispute.
For example, suppose your company is selling a mobile software application. You collect customer information in the company name and use a company name on the app store, but you decide that you want to own the trademark in your own name in order to maintain control of the brand if you decide to sell the company (this makes little sense, but we hear it frequently). Because the company is the one selling the products, the company needs to be the owner of the trademark. A trademark filed in your personal name is subject to cancellation—even years down the road.
Some types of simple errors can be corrected. For example, if you are registered in Nevada, but you refer to yourself as a California corporation in your trademark application, because your office is in California, then you can request a correction. But the safer approach is to be careful when filing a trademark application about who the owner is.
What is the Trademark?
You probably spent a lot of time deciding on your trademark. Make sure you have finished the process because the trademark that you include in a federal trademark application cannot be changed after filing. You would have to file a new application.
To avoid this issue, consider carefully what you want to protect.
For example, if you file a trademark application for protection of a logo design, and then want to change designs four months later, you’ll need to file a new application. You cannot update the original application with the new design. Or, if you file an application for a design that includes a tagline underneath it, and then you start using the trademark without that tagline, you will be unable to renew your trademark because your use does not match the mark in your registration.
It’s true that minor changes to a trademark might be accepted if the trademark examiner decides that they are “non material.” For example, you can normally change a space to a hyphen. But as with adjustments to the ownership of an application, it is better to avoid relying on a subjective decision of the trademark office.
What are You Selling?
Trademark protection is not granted in the abstract—you receive a trademark registration for the specific goods and services that you are selling. You can file an application based on your future plans to sell, but you still can only list the things that you really intend to sell.
When you file a trademark application, you make a legal declaration about the accuracy of the list. The list of goods and services will often need to be adjusted before a trademark registration will issue; for example, if you list “clothing,” you will have to provide the specific clothing items, such as shirts, hoodies, dresses, jackets, etc.
The critical point to remember is that the scope of the goods and services in a trademark application cannot be expanded (broadened). It can be reduced by deleting things; it can be corrected or amended, but only if that change does not expand the scope of the goods and services.
Unfortunately, a poorly considered list of goods and services might result in trademark protection that is much more limited that you could have obtained with better planning. For example, suppose you apply for a trademark on “boots.” A few months into the trademark process, you decide that you will also be selling athletic footwear and sandals. You could have applied for “footwear” so that your entire product line was protected, but the application cannot be expanded now. You’ll need to file a separate trademark application or just proceed with the application for “boots” knowing that you don’t have trademark protection for your other products.
To summarize:
- Trademark ownership must be accurate and based on who will use the trademark in business
- The trademark cannot be materially changed after filing
- The list of goods and services cannot be expanded after filing
Be certain that you understand the scope of the trademark rights that you need for your business and that you carefully prepare your trademark application. If you don’t, you may have to file a new application or end up owning a trademark registration that doesn’t fully protect your business or is subject to a legal attack by others.
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