Three Important Reasons NOT to File a Trademark

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You won’t hear many trademark attorneys tell you when not to file a trademark. There are, however, several important reasons you may want to consider not filing a trademark application in order to best protect your business and brand. Here are three of them.

1.    Filing May Awaken a Trademark Troll or Infringement Threat.

An unfortunate reality of American trademark law is enforcement of rights, including via participation in an infringement action, is expensive. Prosecution or defense of a trademark infringement action can easily reach into the six figures. Companies faced with the options of fighting an infringement complaint or simply rebranding therefore often choose the latter, if for no other reason than to avoid the expense of litigation. 

Armed with this knowledge, some businesses have made it a corporate strategy to drive any similarly-named business, whether in the same industry or not, away from use of a like brand name. There are of course other times where a third-party entity has a legitimate claim your brand name infringes upon or dilutes their mark. Because trademark filings are public record, it is possible by filing a federal trademark application you may awaken trolls or legitimate claimants monitoring these filings and incur additional business expenses negotiating an out or rebranding.

2.    Failure to Appropriately Search the Trademark Database.

A major misconception of trademark filings is that after one files an application their work is done. The filing of a trademark application, however, is just the first of several steps in the registration process with the United States Patent and Trademark Office (USPTO). During that process there are several opportunities for third-parties to contest the validity of your mark, including as detailed in paragraph 1, above. Even after registration, third-parties have up to five years to attempt to cancel your mark. It is therefore essential to thoroughly research a potential mark prior to registration. An appropriately thorough trademark search prior to filing an application is therefore critical.

3.    Your Mark is ‘Merely Descriptive.’

Finally, trademarks that merely describe the product (e.g., ‘World’s Best Peanut Butter’) are subject to more USPTO scrutiny than more distinctive names. The USPTO may refuse registration of ‘merely descriptive’ names and will not refund your filing fee in the process. 

Ultimately, the decisions of whether and when to file for a trademark are important and particular to each individual business. In addition to the multiple risks discussed above, there are a number of important benefits that come with trademark registration. You should accordingly discuss these issues with a qualified attorney in consideration of any filing.

Zach Warkentin is a trademark attorney in Denver, Colorado. He is also a musician and a former graphic designer and creative director. For more information about Zach, please visit Warkentin LLC here.

DISCLAIMER: The above discussion is for informational purposes only and is not for the purpose of providing legal advice. You should contact an attorney to obtain advice with respect to any particular issue or problem. Use of and access to this website do not create an attorney-client relationship between Warkentin LLC and the reader.