In one of Hemingway’s short stories, a man went to Madrid and put an ad in a local paper asking his son Paco to meet him at the hotel because he had forgiven him. The next day police had to step in and clear the street of hundreds of young men named Paco who wanted to be reconciled with their dads.
This anecdote shows the importance of being specific and unique in naming someone or, in our case, something – your business. The idea of creating and promoting a specific business name must always be associated with the assurance that it is truly unique and you are the only one that has the right to use it. This is what registering a trademark is all about.
Unfortunately, many small business owners commit costly mistakes in identifying the availability of, applying for and maintaining trademark rights over their business name, logo and other specific associated elements. Today we will discuss the most frequent such mistakes, and how to avoid making them.
1. Incomplete Trademark Availability Search
Most business owners are unaware that they need to perform a detailed trademark availability search before they register a business and order signage and office paper with letterheads. Sometimes, including a simple word in your business name may cause you to infringe another trademark, or at least find yourself called to court. For instance, the manufacturers of Monster Energy soft drinks are actively opposing in court any other business name with the name “monster” included in it.
Simply performing a search on the US Patents and Trademark Office website is not a thorough search – you need to file a request and pay a fee (around $350-700, depending on the case) in order to be 100% certain that you can use a specific trademark or name.
2. Assuming That You Own a Business Name Because You Created It
Even if you invent a word, or spell it in a unique manner (for instance, using @ instead of a) you must still register your trademark. Unless you have that specific word or spelling registered with the USPTO, you have no legal ownership over it. Someone else may see it, register it and then have the legal right to tell you to stop using it! It sounds absurd, but this is the reality.
3. Registering a Trademark and Not Securing the Associated URL
This is one of the most frequent costly mistakes even for large corporations. For example, just a few months ago the giant Google lost legal ownership over the domain www.google.com. Its domain registration had expired and someone had forgot to renew it, but thankfully a Google employee found out, purchased it in his name and resold it to the company.
Not securing the URL associated to your trademark leaves you exposed to cyber-blackmailers, who will purchase that domain and then offer to sell it to you for a hefty amount of money.
4. Assuming That the Trademark Covers Everything You Apply It To
This is also completely false. When you file for trademark registration, you have to fill in every item covered by this right: signage, products, mediums (print, audio-video, digital), phrases, etc. Any item which is not included in this descriptive list is not protected by trademark.
5. Not Renewing Your Trademark
When you register a trademark, the USPTO offers protection for it for a certain period of time. The expiration date is clearly written on your trademark certificate. You must always remember to apply for renewal BEFORE the expiration date. As we have seen from the example of Google above (albeit it refers to domain registration) in the short period of a few hours someone else may apply for your trademark and snatch it from you.