Number 1 Mistake Made When Filing a Trademark Application Without a Lawyer

The number one problem I see the most with businesses filing their own
trademark applications is the failure to “disclose” parts of their
mark which are not protectable. Fortunately, this is an easy problem
to avoid, and even if the problem is not avoided, it only causes a
delay in the trademark application and time to fix the problem. But
let’s avoid that.

U.S. trademark law protects “inherently distinctive” marks. If you
have a distinctive mark with non-distinctive components, only the
distinctive part is protectable. The non-distinctive parts must be
“disclaimed”.

For example, Zynga is a very distinctive name, derived from one of the
founding partner’s dog’s name. If they were to apply for trademark
protection for “Zynga Online Games,” the application must disclaim
“Online Games” because it is a generic term. The USPTO will not grant
trademark protection to generic or descriptive terms because those
terms are reserved for other companies in the business of online
gaming. Thus, the end result is that while the mark is “Zynga Online
Games”, only the “Zynga” part of the mark is granted protection.

The Fix: After the initial part of the online trademark application asking for all your contact information, you will be asked to enter the words of the mark you are seeking trademark protection. You will then have a chance to “Preview USPTO-Generate Image” (Slide 1). Immediately after this section, check the small box next to “Check here to display the full listing of additional statements from which you may make your selection.” This will display a whole list of options, but the only one relevant to this article is the first item “Disclaimer” (Slide 2). There is a box you can enter the words you wish to disclaim, and here is where you enter the generic and descriptive terms of your mark. It will ultimately read “No claim is made to the exclusive right to use [ONLINE GAMES] apart from the mark as shown”.

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– ck

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