10 Common Mistakes in Trademark Applications and How to Avoid Them

Written by JLG - May 1, 2025

Filing a trademark application may seem straightforward, but even small mistakes can lead to costly delays, rejections, or even loss of trademark rights. Understanding the most common mistakes in trademark applications can help you avoid them and secure strong protection for your brand.

1. Choosing a Weak or Non-Protectable Trademark

Mistake:

Applying for a trademark that is too descriptive, generic, or otherwise weak. For example, using “Fresh Bread” for a bakery or “Quick Clean” for a cleaning service.

Why It Is a Problem:

Descriptive or generic terms are not eligible for trademark protection because they do not distinguish your brand from others.

How to Avoid It:

Aim for a distinctive mark (suggestive, arbitrary, or fanciful).
Conduct a trademark strength assessment before filing.
Consult with a trademark attorney to ensure your mark is legally strong.

2. Inadequate Trademark Search

Mistake:

Failing to conduct a comprehensive trademark search before filing your application.

Why It Is a Problem:

Without a proper search, you risk applying for a mark that is already in use, leading to a rejection or a costly legal dispute.

How to Avoid It:

Perform a detailed search of federal, state, and common law trademark databases.
Consider searching international databases if you plan to expand outside the United States.
Have an attorney conduct the search to ensure nothing is overlooked.

3. Incorrect Classification of Goods or Services

Mistake:

Filing your trademark under the wrong class of goods or services. For example, registering “Sunshine” for clothing under a class meant for cleaning products.

Why It Is a Problem:

Misclassification can result in your trademark being rejected, or worse, providing no protection for your actual products or services.

How to Avoid It:

Understand the USPTO’s 45 trademark classes.
Carefully review your products or services to ensure proper classification.
Seek guidance from an attorney to correctly classify your goods or services.

4. Vague or Overly Broad Descriptions

Mistake:

Using vague or overly broad descriptions of your goods or services in the application. For example, listing “consulting services” without specifying the industry.

Why It Is a Problem:

The USPTO may issue an Office Action asking for clarification, which can delay the registration process.

How to Avoid It:

Use clear, specific terms to describe your goods or services.
Review USPTO guidelines for acceptable descriptions.
Have an attorney review your descriptions for accuracy.

5. Filing as the Wrong Owner

Mistake:

Incorrectly listing the owner of the trademark, such as an employee rather than the business entity.

Why It Is a Problem:

Incorrect ownership can lead to a loss of trademark rights or disputes within the business.

How to Avoid It:

If you operate a business, file the trademark under the name of the legal entity (LLC, corporation).
Make sure the ownership is clear in any business agreements.
Consult with an attorney to ensure accurate ownership records.

6. Ignoring Office Actions

Mistake:

Failing to respond to an Office Action issued by the USPTO within the required timeframe.

Why It Is a Problem:

Your application may be abandoned if you do not respond, requiring you to start the process over.

How to Avoid It:

Monitor your email and USPTO account for any notifications.
Carefully review the Office Action for the reasons behind the refusal.
Work with an attorney to prepare a clear, well-reasoned response.

7. Failing to Maintain Your Trademark

Mistake:

Thinking your trademark is protected forever after registration.

Why It Is a Problem:

Trademarks must be maintained through regular filings, such as the Section 8 Declaration (between the 5th and 6th year) and renewal every 10 years.

How to Avoid It:

Track maintenance deadlines and set reminders.
Use your trademark consistently in commerce.
Work with an attorney to ensure you meet all renewal requirements.

8. Not Monitoring for Infringement

Mistake:

Assuming your registered trademark will automatically be protected without further action.

Why It Is a Problem:

If another party uses a similar mark, it can damage your brand, and failure to take action can weaken your trademark rights.

How to Avoid It:

Regularly monitor the marketplace for unauthorized use of your trademark.
Consider using a trademark watch service.
Enforce your rights with cease-and-desist letters or legal action when necessary.

9. Misunderstanding the Scope of Protection

Mistake:

Believing that registering a trademark protects your brand in all categories of goods or services.

Why It Is a Problem:

Trademark protection is limited to the goods or services you list in your application. Registering “Eagle” for clothing does not prevent someone from using “Eagle” for a software company.

How to Avoid It:

Register your trademark in all relevant classes.
Consider expanding protection if your business grows.
Get legal advice to understand your trademark’s scope.

10. Filing Without Legal Guidance

Mistake:

Trying to handle the entire trademark application process without professional help.

Why It Is a Problem:

Small mistakes can lead to rejections, delays, or even loss of your trademark rights.

How to Avoid It:

Consult with a trademark attorney before filing.
Have an attorney conduct a comprehensive search and review your application.
Let an attorney handle any Office Actions or disputes.

Secure Your Trademark the Right Way

Trademark protection is an investment in your brand’s future. Avoiding common mistakes can save you time, money, and frustration. At Jafari Law Group, we help businesses secure strong trademarks and protect their brand assets.

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