· Committing to a mark without having performed a search on pre-existing similar trademarks. Before you engage efforts and money into developing a trademark (for instance by designing a website or printing packaging bearing your trademark) make sure you do a comprehensive search for similar marks. This will avoid costs and glitches during the application process.
· Believing domain name business name registrations can afford trademark protection. A domain name can function as a trademark so long as it is used in a way that it identifies the sources of particular goods or services. For instance, Amazon.com is used both as a web address and as a trademark. But each protection required two separate registrations: one with the domain name registry one with the USPTO. Just like a domain name can become a trademark a business name can also be used to describe goods and services. But there again, two separate registrations are required.
· Postponing filing an application. Trademark rights are often created by your use of your mark in commerce and not through registration. While registration is not required it will enhance and help you prove your rights. A registration creates the legal presumption that you are the legal owner of the mark and that as such you have the right to use it in the country where it was registered. It informs other people that you are the owner of the mark and often is a prerequisite to act against infringers before courts. In the US, a Federal registration also gives you the right to use the ® symbol.
· Not checking on the availability of the corresponding domain name. Trademarks and domain names are different. To avoid potential conflicts, make sure both the trademark you wish to use and the corresponding domain names are available for registration and that no related goods or services are branded in a similar sounding-, looking- or feeling-fashion.
· Not using the trademark or otherwise failing to control how it is used by licensees. While this is not the case under the European Union’s Community Trade Mark Regulation, in the U.S., trademark applicants must certify that they are using or have a good faith intent to use a mark in connection with specific goods or services. Accordingly, failing to use the trademark in commerce may result in weaker or harder to demonstrate rights. Similarly, rights in and to a trademark may be lost when licensed to third parties without quality control over how the trademark is used. To avoid this you should always retain some form of quality control over licensed goods or services bearing your mark and ensure you put all licensing terms into writing.
Gaelle Rochenoir