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  • Writer's pictureSheila Gibson, Esq

Filing your own trademark application?

For #smallbusiness week we thought we'd offer some common mistakes and things to avoid when filing a trademark application on your own.

1. Not doing a proper search. You've heard us mention the dreaded words before: "likelihood of confusion." It's not just that you need to make sure your exact mark does not come up, but you also need to make sure there aren't marks that are confusingly similar to the mark you wish to register. This includes phonetic equivalents (e.g., misspellings) and marks that have the same meaning (e.g., foreign words). Refusals for a "likelihood of confusion" are difficult, costly, and sometimes can't be overcome, so be sure to perform a proper search to minimize the risk of filing for a mark you will not be able to register.

2. Selecting the wrong class. Trademark registrations only protect the mark in the classes identified on the application. Goods and services are divided into 45 classes--34 goods and 11 services. Sounds simple, except the particular goods or services you for which you are using your mark may fall into multiple classes. And even worse, if you select the wrong class, your registration will not protect the goods and services for which you are using the mark. Still worse, if you are not using the mark at all on the goods or services you selected, your registration may be invalid.

3. Not realizing trademark applications are public record. As soon as you file a trademark application, you will begin receiving mail claiming you owe additional fees. Official information regarding your application will only come from the USPTO or your attorney. In addition, domain names for the mark will be scooped up and when you contact the "owners" to purchase, the price tag will be $3,000--conveniently priced just below what it will cost to get it through a domain name dispute. So be sure to grab all the domain names and social media handles you intend to use for your business BEFORE you file your trademark application.

**This is for general and educational purposes only and is NOT legal advice. For legal advice, contact an attorney or book a consultation with our firm.**

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