1.      Not Performing your Due Diligence prior to filing a trademark

Applicants are understandably frustrated when they apply for a trademark only to find out that there is already a registered identical trademark for your same goods and services! It is important to do your due diligence, including searching the USPTO database of registered and pending trademarks, prior to filing your application.

2.     Changing your mind about your trademark

After you submit your trademark application, it is difficult to change your trademark.  You might be allowed to make minor changes to the trademark, but a significant change will not be allowed by the USPTO.  So, you want to make sure you are fully satisfied with your trademark before you submit!

‍

3.     Changing your mind about what you’re selling

You cannot “expand the scope” of what you listed as your goods and services in the application. What that means is that you can’t broaden your goods and services.  If you only listed hats in your application, you won’t be able to add t-shirts at a later stage.  So, you want to make sure you think about what you’re selling or providing carefully before you submit.

4.     Not Promptly responding to a call or email from the USPTO

If the trademark examining attorney at the USPTO reaches out to you directly via email or phone call for an Examiner’s Amendment, you’ll want to responds as soon as possible. An Examiner’s Amendment is when the trademark examining attorney reaches out to change a part of your application in order to fix the issue, and move your application to the next stage. That’s great news!  If you don’t respond promptly, the trademark examining attorney will issue a formal correspondence, known as an Office Action, which requires you to respond formally using the USPTO online database.

5.     Missing Deadlines

When you receive an Office Action from the USPTO, there is a strict deadline of 6 months to respond. Failure to respond within these deadlines will result in the abandonment of your application.

‍