The 5 most frequent mistakes when applying for a trademark

You have finally decided a name for your new business or you know what the image you want for your products, and you decide, with good judgment, to apply for a trademak to protect it and to use that name or logo exclusively.

Althought the Spanish Patent and Trademark Office (OEPM) makes available to the applicant extensive information and tools for submitting trademark applications in Spain, the truth is that the process is not exempt of difficulties, in view of the notification of defects that are published everyday in the Official Gazette of the Industrial Property.

 

Next we address the 5 most frequent mistakes when applying for a trademark and how to avoid them:

 

1. Selecting a generic name

First time applicants tend to select names that describe the activity they perform or the products they sell. It does not always have to do with the lack of ideas, because, who has not thought of the great idea of ​​being unique that can use the name of the product that sells ?. Something like being the only seller of milk that can use the word “milk” for its products. Knowing these temptations, the legislators established that it is not possible to register trademarks that are constituted in full by the denominations that serve to describe the products or services they designate. Your brand should allow you to differentiate yourself from your competitors, stand out in the market.

So forget about generic names and select a name or an image that is truly original and distinct.

2. Not defining (well) what you want to use the trademark for

When we submit the trademark application we must indicate what we want to use the selected name or logo for.

At this point, every applicant has a clear idea about their business, so this requirement should not be problematic. However, when defining the use of our brand, we must indicate the type of products or services we offer according to a specific classification, the Nice classification. In this classification, products and services appear separately, and grouped into different categories. The dificulty here lies in fitting our activity into pre-established categories without leaving us anything along the way. And, although we see our company as a unit, the truth is that we may be developing activities or offering products or services that appear in different “classes” of this Nice classification.

3. Not having legal capacity to be a right holder

The applicant for a trademark must always be a natural or legal person. One or more, since there is also the possibility of a trademark being requested by several persons at the same time. To prove this capacity we must indicate in the application the NIF or NIE of the applicant.

Although this seems an easy requirement to fulfill, we must remember that some figures, such as communities of property, lack their own legal personality and therefore cannot apply for a trademark.

4. Not filling in the request correctly

Official forms can be “intimidating” when you face them for the first time. We get nervous and end up messing up in the simplest way: write the name of our brand in the box where it corresponds, that the denomination we write exactly matches the denomination that appears in the graphic representation of the brand. Sometimes, trying to complete all the fields of the request instance, we fill in unnecessary sections with superfluous information. Other times we forget to complete indispensable fields.

And although it seems ackward, incompletely or incorrectly filling out the application for the trademark is one of the most common causes of suspense. So check once, twice and three times before submitting your application.

5. Not performing a previous search

One of the biggest headaches we can have when registering our trademark is that, when we have the application submitted and our business is running, a previous rights holder appears with a brand very similar to ours for products and / or services similar to those we offer; and presents an opposition to the Spanish Patent and Trademark Office against the grant of our trademark.

Although there is always the possibility of counterargument defending our brand and its uniqueness, the truth is that these situations can jeopardize one of the foundations of our business: our image.

Losts Investments in advertising and marketing; expenses in design, packaging and even products that have already been marketed with our brand; Web domains, business cards … there are so many places where our brand makes us visible!

Searching for another denomination, another image, another logo and starting from scratch the registration process is a waste of time and money that we can avoid by carrying out an exhaustive search of the previous registrations of trademarks and trade names that exist in Spain that may conflict with the one we have chosen. And for that it is not enough to make sure that there is no identical brand to ours, but we must also check that there are no similar brands with risk of confusion.

So if you are thinking of applying for a trademark and desire to avoid problems, have the specialized advice of an Industrial Property Agent and contact us

We accompany you throughout the registration process, from the choice of the brand to its registration. So you only have to worry about what really matters to you, your business.