How to avoid a costly trademark do-over
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So, Reader... your business has grown and you’re ready to protect your brand by applying for trademark registration. This is such an exciting step and a smart one to protect your business! But before you fire off applications and pay those fees, slow down and make sure you’re doing your due diligence so you know you’re going through the process correctly. At the AWB Firm, we’ve seen it all when it comes to trademarks, so let us be your cautionary guide. Here are 3 ways the trademark registration process can go wrong. 1. You’re working with an “online service” rather than a real lawyer Oh, Reader. We’ve had SO many clients come to us after a trademark application has gone wrong. They’ve gone through a website like LegalZoom or a random trademark agent that popped up in a Google search. These services seem quick and cheap, but when they go wrong, they can be incredibly time consuming and expensive to fix. Some folks who’ve come to our firm have had irreparable problems and have had to start their applications over from the beginning. Our process of running an extensive search helps many clients avoid paying the expensive nonrefundable filing fees for a trademark they won't have a chance of registering. We research the actual words/logo/phrase/etc. for previous use, AND we help clients choose the categories in which to apply. Speaking of extensive searches… 2. Your name research isn’t extensive enough Think you’ve got a great business name and you’re ready to protect it with a trademark? First you should run a search and make sure that name, or a similar name, isn’t already being used by another similar business. BUT a simple Google search probably won’t cut it! Because trademark law is meant to prevent customer confusion, searching for the exact name won’t ensure that you’re in the clear. You should search for alternate spellings and similar words that mean the same thing. For example, when I searched for “Legal Road Map” I also checked for “law road map,” “lawyer road map,” “attorney road map,” and also variations using “roadmap,” “map”, “route,” and “road” plus plurals and other endings for all of those words like “maps” or “mapping.” These searches won’t always catch everything, so if you’re planning to make a significant investment in a brand or product, it’s worth hiring an attorney who can use the appropriate tools to perform a thorough search (including resources that aren't publicly available), and evaluate the results to advise you whether any close matches are a risk for your business. 3. Your business name isn’t actually trademarkable It can be incredibly frustrating (not to mention, expensive) to file for a trademark and pay nonrefundable fees only to find out you’ve registered in the wrong class or that your mark is categorized as merely descriptive. There are several rules here, but some quick ones to keep in mind: Avoid business names that are descriptive (such as “Jane’s Baking Blog”), location-based (“Chattanooga Pizza Company”), use your last name (like “Smith’s Cookie Shop”), or are generic (“The Tire Store”). Want more information on trademarks and other wisdom to keep in mind when seeking a trademark for your biz (including the BEST kind of name to use if you want to trademark something)? No sign up required, just click and download our free Trademark naming guide. Pssssst... I was interviewed on the Influential Personal Brand Podcast! We discussed the what, why, and how of intellectual property plus trademarks, copyrights, contract templates, and more. Listen to the episode here. |
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