3 things you must get right when you first register your brand

April 23, 2015
Nicholas D. Wells
InsideCounsel

Applying to register a trademark is a simple process. You fill out a form at uspto.gov, enter your credit card information and click submit. It seems so easy that you may wonder why LegalZoom should even charge a fee for handling the process for you.

And yet the ease of the online application process is beguiling; errors or lack of judgment in the initial application can significantly weaken your trademark rights or even lead to your registration being canceled.

While there are many issues to consider in properly preparing a trademark application, the three things below merit particular attention because they cannot be changed after a trademark application is filed.

The owner

The owner listed in a trademark application must be the person or legal entity that is actually selling goods or services in connection with the trademark, or that has intent to do so. If the wrong owner is listed, the application is void ab initio. That means that even if you obtained a trademark registration years ago, but you filed the application in the wrong name, the registration could be canceled in a dispute if another party discovers a flaw in the ownership as filed on your original application.

For example, suppose your company is selling clothing online. You enter vendor and customer contracts in the company name, but you decide that you want to own the trademark in your own name in order to maintain control of the brand if you decide to sell the company (this makes little sense, but I hear it frequently). Because the company is the one selling the products, the company needs to be the owner of the trademark. A trademark filed in your personal name is subject to cancellation—even years down the road.

Some errors can be corrected. For example, if you are registered in Delaware, but you refer to yourself as a Florida corporation in your trademark application, you can request an amendment. But the better choice is to consider carefully who should own the trademark before you file the application.

The mark

The trademark that you specify in your application cannot be materially changed after filing. This can lead to all sorts of problems if you don’t consider carefully exactly what you want to protect.

For example, if you file a trademark application for protection of a logo design, and then want to change designs four months later, you’ll need to file a new application. You cannot update the original application with the new design.

Or, if you file an application for a design that includes a tagline underneath it, and then you start using the trademark without that tagline, you will be unable to renew your trademark because your use does not match the mark in your registration.

Minor changes may be acceptable. For example, you can normally change a space to a hyphen. But as with adjustments to the ownership of an application, it is better to avoid relying on a subjective decision of the trademark office.

The goods and services

When you apply for a trademark, you list the specific goods and services that you are selling or intend to sell under that trademark. You also make a legal declaration about the accuracy of that list. The list of goods and services will often need to be adjusted before a trademark registration will issue, but it cannot be expanded after the initial application is filed.

Unfortunately, an ill-conceived list of goods and services can leave you with trademark protection that is much more limited that you could have obtained. For example, suppose you apply for a trademark on “sandals.” A few months into the trademark process, you decide that you will also be selling moccasins and dress shoes. You could have applied for “footwear” so that your entire product line was protected, but the application cannot be expanded now. You’ll need to file a separate trademark application or proceed with the highest level of trademark protection only for your sandals.

Because ownership, the mark itself, and the list of goods and services cannot be materially changed or expanded after filing a trademark application, it is critical that you fully understand the scope of the trademark rights you are seeking to protect and that you use appropriate judgment in crafting a trademark application. The alternative is paying for duplicate applications, owning weak or canceled trademark registration, and poor positioning in eventual trademark disputes.