In most jurisdictions, the majority of trademark filings correspond to small businesses and entrepreneurs or solopreneurs. When starting a business, solopreneurs are caught up on the demands and needs of getting their business off the ground to a path of growth and most of the times they overlook the following when it comes to trademarks.
- Not realizing that protecting trademarks could create value for their business.
Most new businesses are either renting/leasing space or their owner works out of their own homes. Also, most are financing their inventory of products they sell or have taken out loans to promote the services they provide.
Thus, when it comes times to sell or liquidate their business, they will have no other asset that their client’s list and their intellectual property, if any. Not investing in protecting their trademarks will diminish the value of their business in the future.
- Not doing a trademark availability search prior to selecting their brand(s) for their business.
In order to maximize their expenses, solopreneurs, avoid hiring a trademark attorney to conduct a trademark availability search. Most of the times they rely on their own internet searches to clear the brand selected. In the process, forgetting that a trademark availability search, in the US, will comprise, not only, the federal trademark registry, but also each state trademark registry as well. Will look, not only, for active trademarks, but also for cancelled or abandoned marks. This search will also comprise a limited search of the web for use of same and/or similar marks and will comprise a search of not only identical but phonetically equivalent marks. Although, not required, we typically recommend that you conduct a trademark availability search before proceeding with the filing of a trademark application.
- Waiting for the Trademark Office to approve their trademark application to start using it in commerce.
As opposed to foreign jurisdictions, in the United States, actual use of the mark in commerce creates rights and priority over others, ownership over a mark starts with the first to use not the first to file. Thus, if a trademark availability search was performed and it showed that the mark may be available, it will be to the benefit of the trademark owner to start using the mark immediately.
- Not expanding protection to countries where they intend to manufacture or commercialize their brands in the near future.
Nowadays most of the products being sold in the US are manufactured overseas. It is very common to find small business manufacturing or using their brands in foreign countries.
Even though in the US actual use of the mark in commerce creates rights and priority over others and ownership over a mark starts with the first to use, most foreign jurisdictions follow the first to file system. This, combined with the fact that it is not required to prove actual use of the mark in commerce to obtain registration, has made it easier for some manufacturers or potential distributors to file for trademark protection in bad faith with the sole intent of holding them for ransom from the real trademark owners.
Thus, if manufacturing or commercializing their brand overseas is a need for the business is highly recommended to preemptively file for trademark protection in those jurisdictions before proceeding with any initial contact or negotiation for said manufacturing or commercialization.
- Incorrect use of the ®, TM or SM denominations.
Although is not a requirement that these symbols are used, it’s highly recommended that mark owners use them appropriately to make sure that the public knows that they either have a federal registration or they are just claiming common law rights in the mark.
These symbols represent:
® Registered mark symbol. It is a federal registration symbol reserved for registered marks, not pending, with the United States Patent and Trademark Office. Should be noted that it’s prohibited to use the ® before the actual certificate of registration is actually issued by United States Patent and Trademark Office.
TM and SM are reserved for use by unregistered marks.
TM: To be used on unregistered marks that identify PRODUCTS such as sodas, cereals, produce, and canned products.
SM: To be used on unregistered marks that identify SERVICES such as those of restaurants, hotels, travel agencies, and import/export agencies, etc.
Is very common to find service mark owners using the TM next to their mark, when the correct denomination would be SM. Properly identifying your rights over the mark will help solidify it.
- Use of generic, descriptive and suggestive terms on their mark.
A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.
The most arbitrary the word(s) used on the mark, the better. Generic, descriptive, and/or suggestive terms are non-distinctive and weakens the protection granted on the mark. Therefore, selecting a strong and unique trademark is highly recommended.
- Failing to seek registration with the Customs authorities to prevent unauthorized importation/exportation of their products.
In most industrialized countries, once a trademark owner is granted trademark registration by the local Trademark Office, the trademark registrant is allowed to file an application with the Custom Authorities to prevent unauthorized importation/exportation of their products.
The registration database includes information on all registered trademarks, including the images of these trademarks and who is authorized to import/export such products.
CBP officers control imports to prevent the importation of products bearing infringing brands and can access the registration database at each of the ports of entry.
Failure to do so could result in the market being flooded with knock offs or a competitor to use your mark without consent.
- Failing to enforce their trademark rights after obtaining registration.
More often than not, trademark holders forget about the trademark once a registration is obtained. Thinking that they now have federal protection over their brand and the USPTO will prevent others from obtaining trademark for the same or similar marks.
Trademark owners must be vigilant of the registry and the market to prevent:
Unauthorized use of their mark by others; failure to enforce your trademark could represent losing the rights granted.
Prevent a trademark from becoming generic; when the mark, due to its popularity or significance, becomes generic or synonymous for product or service that it is registered for could lose the protection granted by its registration.
Prevent the granting of similarly confusingly trademarks by the Trademark Office.
- Not using the mark as registered.
Once a registration is granted the mark must be used, as registered, for all goods/services listed in the certificate of registration, in the same manner as it was registered.
This means that, if you filed your trademark in class 25 for clothing items such as t-shirts, shorts, hats and caps, with a word and a logo. Then, after securing registration, the mark it is used only on hats and caps and without the logo, not as registered and not for all goods listed in the registration, you are opening the registration to a possible full or partial cancellation attack for lack of use as registered.
It’s always recommended to use the mark as registered for all goods/services listed in the original registration. Otherwise, a new trademark application should be filed.
- Thinking that obtaining approval by the Division of Corporations to open the corporation you are protected.
In the US, you are required to register with the Division of Corporations of the state you intend to open or operate a business. When a corporation files its articles of incorporation, the Division of Corporations will search their databases to determine whether an identically named corporation exist on the registry. If no identical namely corporation exist, then you are granted a right to operate in that state under that name. However, they will often allow to register, a corporation with a similar name as long as it not the same. Also, they don’t search based on the similarity of the goods/services being provided. As long as the names are not identical, you are allowed to operate. It is not the same when a trademark owner is granted protection by the Trademark Office, a trademark owner can prevent similarly confusing trademarks from being registered or used in commerce even as a name of a corporation.
I have helped countless new businesses and solopreneurs avoid these common mistakes. I’d like to help by advising you on how to better protect your rights to trademarks, copyrights, and other intellectual property rights in the US and overseas.
Augusto Perera, Esq.
Intellectual Property, Business and Legal Affairs Attorney
Augusto Perera, P.A.
2525 Ponce de Leon Boulevard
Suite #300
Coral Gables, FL 33134
T:305-489-1901
T: 888-581-0816
F 305-721-1532
C: 786-200-8674 (Call, Text or WhatsApp)
E: ap@tmmiami.com
www.tmmiami.com