"The Little Black Book of Trademark Prosecution," South Carolina Lawyers Weekly

Articles / Publications
Douglas Lineberry authored a guide on common trademark prosecution mistakes for the May 11, 2020 issue of South Carolina Lawyers Weekly. It’s important for a brand’s longevity to know the twists and turns of trademark prosecution, and Lineberry highlights some common issues businesses encounter and how businesses can avoid them, including:
  • Filing Too Late – A delay in filing due to a busy schedule, other priority projects or other delays may introduce a time lag wherein another trademark application files before your client’s application and is used against your client’s mark during prosecution.
  • Too Broadly Scoped – A common mistake in trademark filings is filing for the wrong class of goods and/or filing for too many types of goods, which would need to be provided to the USPTO to secure the trademark. This is intrinsically complicated by the fact that once filed, trademark applications only allow extremely minimal changes to the information provided, which creates challenges when new goods are added.
  • Too-Similar with Other Trademarks – While imitation is sometimes considered flattery, it can also be considered “infringement” and “trademark dilution.”
  • Not Confirming Ownership Rights – If the company has a logo, it is imperative to determine who designed the logo. If it was a third-person not in the client’s employ, ensure the client has obtained an assignment or other ownership transfer from this person. Otherwise, once the mark becomes successful, there is a strong chance the third person will come requesting another new term for your client - “royalties.”
  • Failing to Research Before Filing – Ensure your business is original when creating trademarks. While we may not be marketing specialists, a certain level of marketing savoir faire is required to guide clients through the trademark process.
  • Similar Trademarks Make You Look Bad – Another aspect to originality is poor products/services. If a client creates a mark that is similar to another mark, whether that mark is pending at the USPTO or in common law use, it is best to think about using another mark.
  • Missing Deadlines and Walking Away – When receiving an Office Action from the USPTO, understand that the timing deadlines are absolute. Missing a timing deadline leads one to quickly learn what “abandonment” means and a lapse of the trademark application.
Subscribers can access the full article here.

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