How Can a Trademark Be Lost During the Trademark Application Process?

Written by Andrew Reed

Picture of trademark symbol and gavelIn the first part of this series, we discussed why a business should register their trademarks. In the second part of this series, we will discuss how a trademark can be lost during the trademark application process. While some of these issues may not result in instant loss of trademark rights, issues could occur during the post-registration period.

As a trademark applicant, it is important to be truthful with your trademark attorney. Fraud is one of the limited number of arguments that a challenger can raise post-registration. How can you avoid this?

Know Your Products

First, be sure to know the products on which you plan to use the trademark. If your application includes goods or services not currently being used in relation to the trademark, then the application can be denied and a future registration could be attacked. When in doubt, allow your trademark lawyer to conduct audits of your trademark portfolio.

Keep Records of Your Trademarks

Second, keep records of when your trademarks are first used. Keep pictures of that use, too, if possible. The USPTO Trademark Examiners can reject trademark specimens during the trademark application process. In addition, third-party challengers can attack them during post-registration.

In a recent case, the Federal Circuit affirmed an Examiner who rejected a trademark application for having an improper specimen. The applicant’s specimen was a website post that did not offer products for sale on the website. The post only offered the ability to inquire about the product. The Federal Circuit held that there must be some offer for sale, or details about the availability for a sale to be completed. If you are unsure whether your product meets the use in commerce requirements, ask your trademark lawyer.

Speak With a Trademark Attorney About Your Options

Finally, a challenger may oppose the trademark application on grounds that it is likely to cause confusion with an existing trademark registration. A trademark attorney can provide you with guidance on how to proceed. Sometimes we can address these challenges with a coexistence agreement between the parties.

Do I Need a Trademark Attorney?

Working with a trademark attorney can provide your marks with the protection they deserve. If you or your company needs assistance with any of these issues or evaluating any future trademarks, our Dallas trademark attorneys would be glad to help.

Feel free to contact Andrew Reed to find out more about the trademark application process. You can also call our office at 972-528-9039 or contact us online.