For many small businesses, entrepreneurs, and solopreneurs, trademark protection is often overlooked in the early stages of business development. While focusing on growth, branding, and operations, many fail to take the necessary steps to safeguard their trademarks, leading to costly legal issues down the line. Here are some of the most common mistakes trademark owners make—and how to avoid them.
1. Underestimating the Value of Trademark Protection
Many businesses lease office space, operate from home, or invest heavily in inventory and marketing. However, when the time comes to sell or liquidate the business, their trademark and intellectual property may be their most valuable assets.
Without proper trademark protection, businesses risk losing brand value and potential revenue in the long run. A registered trademark enhances brand recognition and increases business
valuation.
2. Failing to Conduct a Comprehensive Trademark Search
To save costs, many entrepreneurs skip hiring a trademark attorney and rely on basic online searches to check for trademark availability. Unfortunately, this approach can miss key risks, including:
• Conflicting trademarks in federal and state registries.
• Inactive, canceled, or abandoned marks that could still pose legal issues
• Common law trademarks (unregistered but legally enforceable)
• Phonetically similar or confusingly similar trademarks.
A comprehensive trademark search helps identify potential conflicts before investing in branding, marketing, and product development.
3. Waiting for Trademark Registration Before Using the Mark
Unlike many other countries, the United States follows a “first to use” system, meaning trademark rights begin with actual use in commerce, not just filing for registration.
If a trademark search confirms availability, businesses should start using the mark immediately to establish priority. Waiting for USPTO approval could allow another business to claim prior rights through earlier use.
4. Overlooking International Trademark Protection
Many businesses manufacture products overseas or expand internationally yet fail to protect their trademarks in those markets.
Most foreign jurisdictions follow a “first to file” system, meaning:
• Trademark rights belong to the first entity that files for registration, regardless of actual use.
• Bad-faith registrations are common, with manufacturers or distributors filing trademarks to hold them for ransom.
If a business plans to manufacture or sell products internationally, it’s crucial to file for trademark protection in those countries before engaging in negotiations.
5. Misusing Trademark Symbols (®, TM, SM)
While not legally required, correctly using trademark symbols helps protect and reinforce trademark rights.
• ® (Registered Trademark): Used only after the USPTO issues a registration certificate. Using it before registration is granted is illegal.
• TM (Trademark): Used for unregistered trademarks identifying products (e.g., clothing, beverages, electronics).
• SM (Service Mark): Used for unregistered trademarks identifying services (e.g., consulting firms, travel agencies, restaurants).
Many service providers mistakenly use TM instead of SM, which weakens their claims. Proper usage helps establish and strengthen legal protection.
6. Choosing Weak or Generic Trademarks
A strong trademark should be distinctive and unique. Avoid:
• Generic terms (e.g., “Coffee Shop” for a café) – These cannot be registered.
• Descriptive terms (e.g., “Fast & Fresh” for a food brand) – These are harder to protect.
• Suggestive terms (e.g., “Speedy” for a delivery service) – While registrable, they are weaker than arbitrary or fanciful marks.
The strongest trademarks are:
• Arbitrary (e.g., “Apple” for computers)
• Fanciful (e.g., “Xerox” or “Kodak”)
Choosing a distinctive trademark ensures stronger legal protection and easier enforcement.
7. Failing to Register Trademarks with Customs Authorities
In many countries, customs authorities can help enforce trademark rights by blocking counterfeit or unauthorized goods from entering the market.
Once a trademark is registered, owners can file with customs authorities to prevent:
• Unauthorized imports or exports of infringing goods
• Counterfeit products flooding the market
• Third parties from using the mark without permission
Failing to do this leaves the brand vulnerable to counterfeiting and lost revenue.
8. Neglecting Trademark Enforcement After Registration
Many trademark owners assume that once a trademark is registered, the USPTO will automatically enforce their rights—this is not the case.
Trademark owners must actively monitor the marketplace and trademark registry to prevent:
• Unauthorized use of their trademark by others
• Trademark dilution or loss of distinctiveness (e.g., “Aspirin” and “Escalator” lost trademark
protection due to widespread misuse)
• Similar trademark applications being approved by the USPTO
Failure to monitor and enforce trademark rights could result in losing legal protections over
time.
9. Not Using the Trademark as Registered
After registration, the trademark must be used exactly as it appears on the certificate and for all listed goods/services.
For example:
• If a trademark is registered for “T-shirts, hats, and shorts” but is only used on hats, the registration is vulnerable to partial cancellation.
• If a logo is registered with specific design elements but is later used in a different form, the registration may become unenforceable.
To maintain trademark protection, owners should use the mark as registered or file for modifications if needed.
10. Assuming Business Name Registration Provides Trademark Protection
Many business owners believe that registering a company name with the Division of Corporations provides trademark protection—it does not.
• The Division of Corporations only checks for exact business name conflicts within that state.
• It does not prevent others from using a similar name for a different business.
• It does not stop another entity from trademarking the same name and restricting its use.
Trademark registration provides nationwide protection and legal enforcement rights, unlike a corporate name registration.
Avoiding these common mistakes can save your business from costly legal battles, lost branding efforts, and diminished value.
I have helped countless entrepreneurs and businesses secure and enforce their trademarks—I’d love to help you too.
Whether you need trademark registration, enforcement, or international protection, taking proactive steps now can safeguard your business’s future
