Starting a business involves dozens of decisions, from branding and marketing to product development. One mistake many entrepreneurs make early on is overlooking trademark strategy. In fact, many business owners even invest heavily in branding before realizing that their chosen name is difficult, or even impossible, to protect. After working on thousands of trademark applications, our firm has seen specific issues arise again and again. So here is Stemer Law’s list of the most common trademark mistakes business owners make, and how to avoid them.
1. Choosing a Name That Someone Else Is Already UsinG
One of the most frequent trademark problems occurs when a business chooses a brand name without checking whether it is already in use. Often, founders come up with a working name and become emotionally attached to it, then rush to build a website, design logos and packaging and launch marketing campaigns. Even if it might not sound or look familiar, it is entirely possible a company elsewhere is using the name.
The optimal way to avoid this is to conduct a proper trademark clearance search before investing in branding. Even if your business budget cannot swing a full worldwide clearance search, a “knockout search” on Google, ChatGPT and the trademark registration database at the United States Patent and Trademark Office (USPTO) can help a lot.
TIP: Just because it is in the trademark registry, does not mean that they have up-to-date rights and just because they are not in the trademark registry, does not mean they do not have rights.
BONUS TIP: Be careful with logos designed by big logo makers. Often times they own the design or the creative person charged with making a personalized one might have made only a few minor changes to a common logo available on a stock image website.
2. Choosing a Brand Name That Is Too Descriptive
Another common issue is selecting a name that simply describes the product or service. Examples might include names such as “Denver Coffee Roasters”, “Best Organic Skincare” or “Premium Dog Grooming.” While descriptive names may seem appealing from a marketing perspective, they are often difficult to protect under trademark law. The minimum requirement for a trademark is that it is distinctive enough to serve as a “source identifier.” In other words, it needs to be something that a consumer would look at and know is a brand, not a description. Trademarks are stronger the more distinctive they are. Many well-known brands like Apple, Nike, and Google are successful in part because their names are highly distinctive. For more on this see our article about whether your Trademark Is Too Weak.
3. Assuming an LLC Registration or Domain name registration Provides Trademark Rights
Many business owners mistakenly believe that registering an LLC with the state, or owning a domain, gives them exclusive rights to the name. In reality, state business registrations and trademark law operate separately. A state may approve an LLC name even if another company already owns trademark rights to a similar name. As a result, two businesses can legally have the same LLC name while still being involved in a trademark dispute. Trademark protection generally requires either actual use of the mark in commerce, or federal registration with the United States Patent and Trademark Office (USPTO). This is also true for domain names. The law is clear that the use of a domain name itself does not secure trademark rights.
TIP: use of your LLC or a domain itself is not sufficient to show use of your trademark in US commerce, which is minimum requirement for owning a trademark.
BONUS TIP: buy your domain before you file your trademark application, if possible. Many companies have technology that scrapes the USPTO database to identify filed trademarks so they can purchase the generic top-level domains (.com, .net, etc.) with that word and sell them at a higher price.
4. Waiting Too Long to File a Trademark Application
Another mistake is delaying trademark protection until your business has already grown. In the United States, trademark rights are often based on first use in commerce, but federal registration provides significant advantages, including nationwide priority rights, legal presumptions of ownership and stronger enforcement options. Bluntly stated, securing trademark protection early can help prevent costly disputes later. For example, if you are growing your brand in New York City before branching out, while without your knowledge, a company in San Fransisco has also been building the same brand, you might lose out on your rights. Unless you have a federal registration or nationwide use, your trademark is only protected locally.
This also prevents what we call the Brand Name Nightmare, a topic we have written about in the past. That is something that can happen if you operate your company without a registration and another company comes along with the same name and they file an application. If their application eventually registers and remains registered for 5 years, they can file a Declaration of Incontestability. This declaration essentially blocks anyone else from asserting rights against them, even if another company came first by decades.
TIP: some tech companies focus on protecting their patents and technology as the bread and butter of their company. You will not hear any complaints from these intellectual property attorneys about that, but do remember that your trademarks are highly valuable as well. In fact, trademark registrations would be included in any evaluation of your company.
5. Registering Only a Logo Instead of the Brand Name
Many businesses initially register their logo but overlook the importance of protecting the brand name itself. This can create problems if the logo design changes over time. If the trademark registration covers only the design, protection may not extend to the underlying brand name. In most cases, the word mark (the brand name itself) is the most valuable trademark asset.
BONUS TIP: Don’t start using the circle-R trademark symbol until after your trademark registers. Learn more about it in this article about the various trademark symbols.
Protecting Your Brand From the Start
Your brand name can be one of the most valuable assets your business will own. Taking the right steps early can help prevent legal conflicts and protect the long-term value of your brand. Before investing heavily in branding, businesses should consider conducting a trademark clearance search, choosing a distinctive brand name and filing a federal trademark application when appropriate.
Need Help Registering a Trademark? Working with an experienced trademark attorney can help ensure that your brand is built on a strong legal foundation. At Stemer Law, we help businesses protect their brands through strategic trademark registration and enforcement. If you are launching a new brand or want to secure federal trademark protection, feel free to reach out to discuss your options.
Stemer Law (Stemer, P.A.) is a Denver trademark law firm serving clients across the U.S. and abroad. With 1,000+ trademarks filed, we make brand protection simple, affordable, and effective. To speak with a trademark attorney contact us at hello@stemerlaw.com or (303) 928-1094
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