Even though the majority of trademark applications submitted to the United States Patent & Trademark Office (USPTO) are submitted by small business owners, many new business owners typically overlook the importance of obtaining a trademark for their business’ name, logo, brand, etc. or decide to put it off for the future. However, this can be a truly devastating and costly decision.

Here are the 5 most common mistakes business owners make:

1. Not realizing that protecting their business names and slogans could create value for their business.

Investing in protecting your name and brand is the single most important thing a business owner can do in order to increase the value of his/her business. Just think about McDonald’s, Coca-Cola and Tiffany’s beautiful blue color (Pantone Color number PMS1837).


2. Not doing a proper trademark availability search prior to selecting a name/brand for their business.

Conducting a full trademark search, rather than conducting your own internet search includes, not only the Federal Trademark Registry, but also each State Trademark registry. This type of search will also include same and/or similar marks, and phonetically equivalent marks (Nike vs Nykee). Although not required, a full trademark availability search should always be conducted prior to your decision to filing a trademark application.


3. Waiting for the United States Trademark Office to approve their trademark application before starting to use the name/slogan in commerce.

As opposed to some foreign jurisdictions, U.S. law recognizes actual use of a mark in commerce as creating rights and priority over others. In fact, ownership over a mark starts with the first to use, not the first to file. Thus, if a trademark availability search shows a mark to be available, it is to the benefit of the trademark owner to start using the mark immediately.


4. Incorrect use of the ®, ™, or SM symbols.

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. It is prohibited to use the ® before the actual certificate of registration is actually issued by the USPTO.
  • TM (for products) and SM (for services) are reserved for use by unregistered marks.


5. Failing to enforce 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 that the USPTO will prevent others from obtaining a trademark for the same or similar mark. Trademark owners must be vigilant of the trademark registry and the market to prevent the unauthorized use of their mark by others. Failure to enforce your trademark could represent losing the rights that you have been granted.

The decision to file for a trademark is one that should be done with an experienced Intellectual Property attorney. If you need assistance with trademarks, copyrights, and other intellectual property rights in the US and overseas, please contact Ser & Associates at (305) 222-7282 and let us help you protect your valuable assets!

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