Trademark registration is a key step for businesses to protect their brand identity, but it’s often fraught with challenges. Many applicants, especially first-time registrants, make mistakes that delay or prevent successful registration. Understanding these common pitfalls can help avoid unnecessary legal hurdles and streamline the process. We will explore the top 10 common mistakes made during trademark registration, provide examples of trademark objections, and analyze 10 years of trade mark registration data.
- What is a Trademark?
A trademark is a unique symbol, design, word, or phrase used by a business to distinguish its products or services from those of others. It legally protects a brand’s identity and confirms that no one else can use it without authorization.
- Importance of Trademark Registration
Registering a trademark offers legal protection and helps avoid brand confusion in the marketplace. A registered trademark also adds value to your business, as it is a legally enforceable asset. Without this protection, businesses are vulnerable to infringement, brand dilution, and legal disputes.
- Common Mistakes During Trademark Registration
Even though the process may seem straightforward, it is easy to fall into traps that can lead to trademark registration failure. Let’s explore the most common errors applicants make.
3.1 Not Conducting a Proper Trademark Search
One of the most important steps before applying for a trademark is conducting a thorough search to make sure no existing marks conflict with yours. Failing to do so may result in your application being denied due to similarity with existing trademarks.
For example, Nike cannot register a mark that closely resembles Puma, even if it is for a different class of goods. A complete search should include not only exact matches but also marks that are phonetically or visually similar.
3.2 Choosing a Descriptive or Generic Mark
Trademarks that describe the goods or services directly are often denied registration. A trademark must be distinctive to qualify for protection. Generic or descriptive terms like “Computer Solutions” for a tech company will face automatic rejection since they fail to distinguish the brand from competitors.
3.3 Inaccurate Classification of Goods or Services
When registering a trademark, the applicant must classify their goods or services correctly under the International Nice Classification. Incorrect or overly broad classifications often lead to delays and complications, as each class must be assessed individually.
3.4 Failing to Use the Trademark Properly
Trademark rights can be lost if the trademark is not used properly or not used at all in commerce. Simply registering a trademark is not enough; it must be actively used in the correct form. Failure to provide evidence of proper use can result in registration denial or cancellation.
3.5 Delayed Application
Timing is everything when it comes to trademark registration. Delaying your application could lead to someone else filing for a similar or identical mark. In competitive industries, the first to file usually wins the rights to the trademark.
3.6 Not Responding to Trademark Office Communications
Once the trademark application is filed, the Trademark Office may send communications requiring clarification or additional documentation. Failing to respond to these within the stipulated time frame can result in rejection.
3.7 Ignoring Potential Conflicts with Existing Trademarks
Even after conducting a thorough search, applicants may still face conflicts if they overlook the potential for “likelihood of confusion” with existing marks. This is one of the most common reasons for trademark objections or refusals.
3.8 Incorrect Use of Trademark Symbols
Using trademark symbols (™ and ®) incorrectly can cause legal complications. ™ indicates a trademark that is not yet registered, while ® is used for registered trademarks. Misuse of these symbols can result in penalties or even trademark cancellation.
3.9 Failure to Prove Use of the Trademark
Trademark applications in some jurisdictions require proof that the mark is being used in commerce. Failing to provide this evidence or misunderstanding what qualifies as “use” can lead to the cancellation of the application.
3.10 Assuming International Protection Without Filing Globally
A common mistake is assuming that registering a trademark in one country grants worldwide protection. Trademarks are territorial, meaning you must file in each country where you seek protection. Businesses looking to expand globally should plan to register in multiple jurisdictions.
- Three Leading Examples of Trademark Objections
Trademark objections are often issued by the Trademark Office due to issues with the application or conflicts with existing marks. Here are three notable examples of trademark objections.
Example 1: McDonald’s vs. MacJoy
McDonald’s faced opposition when a local restaurant in the Philippines, MacJoy, attempted to register their name. The Trademark Office ruled in favor of McDonald’s, citing a likelihood of confusion between the two names. Despite being in different countries, the brand’s global presence was strong enough to block the registration.
Example 2: Apple vs. Prepear
Apple filed an objection against a small company called Prepear, which had a logo resembling an apple in its design. Although the businesses operate in different industries, Apple argued that the similarity in logos could confuse consumers. The case eventually resulted in a logo redesign by Prepear.
Example 3: Tesla vs. Zhejiang
Tesla’s attempt to enter the Chinese market was met with an objection from Zhejiang, a local company that had already registered the trademark “Tesla” in China. Tesla had to negotiate to acquire the trademark rights before it could operate under its global brand name.
- Analysis of 10 Years of Trademark Data
To better understand the trends in trademark registration, let’s look at the data for the past 10 years.
| Year | Total Trademarks Applied | Total Trademarks Successfully Registered | Total Unregistered Trademarks |
| 2013 | 350,000 | 200,000 | 150,000 |
| 2014 | 370,000 | 220,000 | 150,000 |
| 2015 | 390,000 | 230,000 | 160,000 |
| 2016 | 420,000 | 250,000 | 170,000 |
| 2017 | 450,000 | 270,000 | 180,000 |
| 2018 | 500,000 | 300,000 | 200,000 |
| 2019 | 550,000 | 320,000 | 230,000 |
| 2020 | 600,000 | 350,000 | 250,000 |
| 2021 | 650,000 | 370,000 | 280,000 |
| 2022 | 700,000 | 400,000 | 300,000 |
The table above illustrates the growth in trademark applications, with a steady increase in successful registrations. However, the number of unregistered trademarks also highlights the common challenges that applicants face during the registration process.