Filing a trademark application can be a pivotal step in protecting a brand, but it’s also a process where minor missteps can lead to delays, rejections, or even permanent setbacks. Avoiding common errors at the outset can make the difference between a smooth registration process and a frustrating, costly experience.

Choosing a Weak or Descriptive Mark

One of the most common pitfalls is selecting a mark that’s too generic or descriptive. A trademark must be distinctive enough to identify the source of goods or services. Names that merely describe the product or service—like “Cold Ice Cream” for a dessert shop—are unlikely to be registered. These marks fail to distinguish your offerings from others in the marketplace.

Instead, choosing a suggestive, arbitrary, or fanciful name often offers stronger protection and is more likely to meet the USPTO's distinctiveness requirements. Conducting preliminary research into name strength can prevent the disappointment of a rejected application.

Failing to Conduct a Proper Clearance Search

Before filing a trademark application, conducting a thorough clearance search is critical. Many applicants mistakenly assume that it's safe to use if a name isn’t already registered with the USPTO. However, unregistered trademarks used in commerce (known as common law marks) can still have legal protections.

A clearance search goes beyond the USPTO database. It also includes searching domain names, business directories, social media platforms, and local trade names to ensure the proposed mark doesn’t conflict with existing brands. Overlooking this step can lead to infringement disputes or forced rebranding.

Misidentifying the Goods or Services

Each trademark application must identify the goods or services the mark will represent. The USPTO uses an international classification system, and applicants do not often choose the wrong category or use vague language.

For instance, listing “technology services” without specificity may result in an Office Action requesting clarification. Misidentifying or overreaching on classifications can delay the application or even cause it to be denied. It's essential to use language consistent with the USPTO’s Acceptable Identification of Goods and Services Manual or carefully tailor descriptions to ensure clarity.

Incorrectly Filing as the Wrong Owner

Another frequent issue is filing under the wrong owner's name. Ownership must reflect who uses or intends to use the trademark in commerce. If the application is filed in an individual's name when the business is an LLC or corporation, it can lead to complications.

Amending ownership after filing is impossible and could render the application void. Before submission, it’s crucial to accurately determine who owns the mark—whether it’s a sole proprietor, a business entity, or a partnership.

Submitting Inaccurate Specimens

A specimen shows how the trademark is used in commerce and is required for certain applications, especially when filing under "use in commerce." Submitting a mock-up or an example that doesn’t meet the USPTO’s guidelines can lead to rejection.

The specimen must show the mark as it appears on goods, packaging, labels, or in service advertising. For example, a website screenshot showing the mark associated with a service and contact information may be acceptable. A digitally altered image or a business card that doesn't reflect actual commercial use will likely be refused.

Misunderstanding the Intent-to-Use Process

Filing an intent-to-use (ITU) application is a good option for those who have yet to start using their trademark but plan to do so soon. However, many applicants fail to follow through with the required steps.

After an ITU application is approved, the USPTO issues a Notice of Allowance. From that point, the applicant has six months to either begin using the mark in commerce and submit a Statement of Use or request an extension. Failing to meet these deadlines can cause the application to lapse. Tracking these dates carefully and preparing the necessary documentation in advance is essential.

Neglecting to Monitor or Respond to Office Actions

After filing, the USPTO may issue an Office Action—procedural or substantive—requiring a response. Common issues include the likelihood of confusion with an existing mark, descriptive objections, or formatting problems.

Ignoring or missing the response deadline (usually six months) will result in the application being abandoned. Staying on top of USPTO correspondence is essential, and even seemingly minor Office Actions should be taken seriously. Careful review and a timely, well-argued response can keep the application moving forward.

Overlooking Post-Registration Maintenance

Registering a trademark isn’t the end of the process. Trademark owners must file maintenance documents regularly—between the fifth and sixth year after registration and again every ten years. Failing to file these documents can result in the cancellation of the trademark.

Additionally, monitoring the marketplace for potential infringers and taking action if the mark is being used without permission is also essential. Trademark rights must be actively maintained and enforced.

Avoiding these common errors can save time, money, and frustration throughout the trademark application process. A deliberate, detail-oriented approach helps build a solid foundation for long-term brand protection.

Contact Shark Mark today to learn more!