How to Avoid These 5 Critical Trademark Errors

If safeguarding your brand name is on your agenda, recognizing the intricacies of business branding is vital. When devising your logo, name, and tagline, it is crucial to shield your intellectual property under trademark law, steering clear of mistakes that could have serious repercussions.

Understanding common law rights that arise the moment you use your brand in commerce is a starting point. However, by registering your trademark, you not only signal ownership but also inform the public about your brand’s exclusive association with your product or service. The registration process with the United States Patent and Trademark Office (USPTO) grants you legal recourse in federal court against infringers and potential claims for additional damages.

Given the complexity of trademark registration, steering clear of mistakes throughout the process is paramount to save both time and money.

1. Avoid Trademarking Your Name as Your Brand

A recent trademark blunder, exemplified in Kylie Jenner’s trademark battle, underscores the complexity of trademarking personal names. Trademark law doesn’t automatically allow you to trademark your own name. Jenner’s attempt faced opposition from Kylie Minogue, alleging potential confusion and brand dilution. Although Minogue later withdrew the case without explanation, the USPTO rejected Jenner’s application for its similarity to an existing trademark, “Kylee,” owned by Mimo Clothing Corporation.

2. Generic Words Are Not for Trademarks

Registering generic words is another pitfall that often leads to USPTO rejection. Ensuring your trademark is “inherently distinctive” makes registration with the USPTO smoother. Even if it’s a newly coined word for your brand, registering it as a trademark ensures comprehensive legal protection. Hotels.com, for instance, couldn’t register its name because “hotels” was deemed too generic.

3. Ensure You Don’t Infringe on Others’ Trademarks

Conduct a thorough search of existing trademarks using the Trademark Electronic Search System (TESS) to avoid potential infringement. Recent disputes, such as that between Coffee Culture Café and Starbucks over a drink named “Freddoccino,” highlight the need to steer clear of trademark conflicts.

4. Maintain Your Trademark

Ensuring continued use of your trademark in commerce is essential for maintaining registered trademark protection. Neglecting maintenance obligations, including renewals between the fifth and sixth year and the ninth and tenth year, risks losing trademark rights.

5. Don’t Be Passive on Enforcing Trademark Protection

While registering a trademark is a crucial step, monitoring and enforcing your trademark rights are equally vital. Failure to protect your trademark weakens its value and may result in losing trademark rights.

To navigate the complexities of trademark classes for your products or services, consult a Jurado & Associates, P.A. Trademark Attorney. Our team can address your trademark-related queries, ensuring a robust application with minimal risk of USPTO rejection. Contact us at (305) 921-0976 email Romy@JuradoLawFirm.com, or WhatsApp at +1 (305) 921-0976 to schedule a consultation.

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