Twice last week, I had people contacting me because they made this fatal mistake on their trademark application. When self-represented applicants file a trademark application, they very often make this fatal mistake. This mistake is not correctable in most cases, and results in the applicant having to file a completely new trademark application. This means that they lose their priority date (their date of filing) and this could cause them to lose the right to register their trademark if another applicant files something similar to their mark in the meantime.
This week, the client that contacted me had applied for a trademark with a “.com” on the end, but then showed use as “trademark,” without the “.com.” The trademark examiner rejected their trademark application because the trademark as applied for didn’t match the proof of usage that they submitted with the trademark application. Is the trademark office really that picky? Yes. Yes, they really are that picky at the United States Patent and Trademark Office!
When you file a trademark application, you need to apply for the mark as you’re actually using it. So if you’re using TRADEMARK, but you apply for TRADEMARK.COM, well, now the trademark as applied for and the mark as you’re actually using it don’t match. They have to match! If they don’t match, then the application is rejected.
Now what do you do? Well, you have two choices: 1) Re-apply for the trademark, and hope that in the intervening period, no one has applied for something similar (because then you may lose out entirely) or 2) Change your trademark usage to match what you put on your trademark application, AND change the application status to 1(b) (Intent to Use) because now you can no longer apply based on “use” because you weren’t using the trademark as of the date that you filed the trademark application.
The issue of a conflicting trademark application that was filed after the client’s trademark application, but before the client’s priority date is a real issue. If the client decides to re-apply for the trademark in order to fix the “wrong trademark” issue, then the application that was filed after her filing date, but before the client’s new application priority date is a problem. If the client filed based on her actual use of the trademark in commerce, then she gave the trademark office a date of first use when she filed. But now, the use shown on the application doesn’t match the stated mark. So if she chooses remedy #1, above, and re-applies, then her priority date for the application changes, so any trademark applications filed after hers but before the new application may cause problems, and if there is a new trademark application filed, the client may have to formally oppose the other applicant’s application.
If the client chooses option #2, above, then she may have the same problem. If she decides to maintain her application priority date by keeping the erroneous application and changing the mark usage, now she doesn’t have use of the applied-for trademark dating back to the date of use stated on the trademark application. She now needs to change the priority date to the date that she altered her trademark usage to the “dot-com” trademark, which would be after the trademark application was filed. Accordingly, she needs to alter her filing basis to be based on and “intent to use” the trademark; she wasn’t using it that way on the date the trademark was filed. So the filing basis is altered to 1(b), and that again leaves open the possibility that a subsequently-filed trademark application may have better priority than that of client.
Not knowing the rules causes a lot of problems, so that’s why smart business owners choose to get the best advice for their valuable brands and hire an attorney to advise on and prepare the trademark application. Filing one’s own trademark application can seem like a great idea, but when an Applicant unwittingly makes errors in the trademark application, it can make the whole trademark process much more costly and time-consuming.
I’m on Facebook! “Like” my facebook page, to be notified every time I go LIVE. Do you have trademark questions? Message me on the Trademark Doctor Facebook page, and I’ll answer your questions on a future Live video.
Contact Dallas, Texas trademark attorney Angela Langlotz today to get started on a trademark application for your valuable brand.