You Don’t Know What You Don’t Know

Don’t Make This Mistake with Your Trademarks

Your trademarks are valuable. Don’t try to register them yourself.

I had a call from a business owner who used an online service to file his trademark. A good client of mine had referred him after his application was rejected. He didn’t know what to do. The online service only provided him with a form to fill out and then file. No additional services were provided.

The USPTO Examiner raised numerous issues, but one was a killer! He had filed in the wrong class. His business was selling products made by others, but he listed the products that he sold. The class and the description of the goods and services were wrong. Normally, I could have changed the class and description so long as it didn’t broaden the original application.  In this situation, it was broadening and the application had to be refiled.

This mistake was costly and could have been even worse.

  • His registration was delayed by the mistake. He was upset that it would now take another year to get registration. As he said, “I should have come to you in the first place.
  • He also had to pay for a new filing fee, and to pay for my services. BTW, my fees were about the same as what the online service had charged.
  • He was fortunate that no one else filed in the meantime. Occasionally others will file for the same mark, and the first to file gets important advantages. If someone else had filed, we would’ve had to fight them for the registration, which is very costly.

As they say, you get what you pay for. I deal with trademark applications all the time. There are subtle traps that are not apparent to the novice. Getting the class and description wrong is just one of them. Your trademark is one of your most valuable assets, don’t risk protecting it to save a few dollars. Some people think they can do it themselves, but then again, some people think they can remove their own appendix.

Give me a call if you want to file a trademark. You’ll be glad you did.

About the Author:

Bill Honaker, “The IP Guy” is a former USPTO Examiner, a partner with Dickinson-Wright, and author of the forthcoming book, Invisible Assets – How to Maximize the Hidden Value in Your Business. To download a sample chapter, click here.

To get answers to your questions click here to schedule a time to talk, email, or give him a call at 248-318-7015.

Subscribe to IP Insights

to receive weekly updates on intellectual property issues affecting your business.