I get it. This isn’t my best business model, going around telling people why they may not want to do the thing I started my law firm to do for people. But, hey I am an honest person and there are definitely some drawbacks to trademark registration.
I don’t think there are enough drawbacks to discourage you from registering at all. But, I want you to have all the information possible so you can make a smart and savvy business decision. So let’s just jump right in shall we? I promise to give some positive advice when it’s all said and done so stick around.
The Competition will Know You Exist
One drawback to filing for trademark registration with the USPTO is that there might be a company out there with the same, or similar mark and they will now know you exist and are potentially doing business with that mark. This becomes an issue for a lot of smaller businesses and brands who get thrown onto the radar of much larger companies that have entire legal departments dedicated to protecting their trademarks. And if they have priority over you, which they likely do, they are going to come after your company in some way shape or form.
You may not have done a search before registering which is worrisome, then again you may have done a proper search and these companies still might attempt to come after you. During the registration process, your mark might do just fine and the examining attorney approves the mark for publication. This is a 30-day period where the mark is published in the Trademark Gazette, and people who monitor their marks very closely read this regularly to find out what marks that are the same or similar have made it through the process.
At this point, they can file an opposition to your mark with the USPTO-and that is not a fun process. It can be very expensive to defend against and most of the time the person that filed for the mark will be forced to settle with the oppose either by changing the mark and dropping their application or altering the class of goods and services they are registered in. If they decide not to oppose the mark, they can sue you for trademark infringement. Again, this is costly and not something most small businesses or online entrepreneurs are equipped to deal with.
This is one of the reasons hiring an attorney to do a proper search can be so important. You will find out all of the same or similar marks that are registered, and your attorney can counsel you on the level of risk. If there is a company that has a history of filing oppositions, maybe registering that mark isn’t a great idea. There are times when it will make sense to move forward with a registration even though risks are present, but again those are conversations better had with an attorney before you file your application.
No One Likes Being Denied
Another risk that I think many people overlook when they come to me to register their mark is that they may, in fact, get denied registration by the USPTO. There are multiple reasons why a mark might be denied.
- It will cause a likelihood of confusion
- It is merely descriptive or generic
- It is too geographically descriptive
- It isn’t a trademark at all, rather it is an ornamental use
These are just a few reasons why your mark might get denied. If you go back through some of my older articles you will find discussions of generic or descriptive marks, as well as what the USPTO considers in determining a likelihood of confusion. It is important to remember that these are all judgment calls made by the examining attorney of each application. And they are only human, so the system isn’t perfect and there are times where an examining attorney and an attorney filing an application feel so differently about a potential trademark, and that’s just how it is sometimes.
Filing fees are rather expensive and they’re nonrefundable so it is important to know what your chances are prior to filing that application. This is one area where an attorney can truly help you in determining whether you should apply for a trademark or not, or advise on ways to make the mark stronger, less ornamental, or different enough to avoid a likelihood of confusion denial.
Your Business Won’t Last
Ok so this is the last and worst of all, but it is important to think about. There are times when filing for a trademark early on is super important, and sometimes your business might need to file before you’ve even started using the mark (so an intent to use application). But, there are times where filing too soon could be a waste of money and time.
Depending on the type of business you run, it might not take off quite like you think and you will have spent time and money on securing a trademark that won’t be used in relation to the original class of goods or services you intended. Certain businesses like apparel brands, supplement companies, online coaching companies, need to have a longer life before jumping in and filing for a trademark application. I say this simply from watching certain brands disappear after just a few short months, sometimes before their marks are even approved.
If you’re trying to avoid wasting time and most of all money (aren’t we all?) speaking to an attorney before you make plans for your trademark application can be very beneficial. No one goes into business thinking they won’t make it, but if you approach me in the first month of your clothing brand’s life, I am going to tell you to how to protect your mark without filing just yet, and ask that you come back to me in a few more months.
The Up Side
I promised to leave you with some good news. If you have a strong brand or business name, and customers are already identifying that name to your products or services and you’re making money from it, then it is likely time to register that trademark. The best way to protect your brand in the US is with a trademark registration. It gives you the most rights, and it is the best way to put everyone else on notice that you own the mark, and the USPTO will help you with monitoring the mark through their registration process.
Handling infringers becomes easier once you have a federal registration too. You can file DMCA takedown requests with major websites where infringement happens often. Although the common law protection does give you the right to file one of these as well, the bigger websites will take it more seriously if you have that federal registration number. And, keep in mind that the common law protection you are afforded just by using your mark in commerce is generally geographically limited, so you aren’t always able to stop everyone from using your mark.
I hope this was helpful! If you’re thinking about registering your trademark but aren’t sure if it is the right thing to do, or the right time I am happy to consult with you on this. I offer full intellectual property strategy sessions and you can sign up to work with me here, or email me at Shannon@montgomerypllc.com. Can’t wait to hear from you!
Please note that this is not meant to be legal advice for you or your situation, this is merely some legal research and knowledge on the given topic.