5 mistakes when trying to register a trademark

The Most Frequent Problems Entrepreneurs Face When Registering a Trademark

Entrepreneurs often encounter common challenges and make frequent mistakes when starting the trademark registration process, which can lead to delays, additional costs, or even the denial of the application.

Here are the most frequent problems encountered:

1. Lack of Distinctiveness and Incorrect Name Selection

This is perhaps the most common mistake and a primary cause for rejection.

  • Generic or Descriptive Names: Choosing a name that directly describes the product or service ("Chocolate, to make chocolates") means the brand lacks distinctiveness and will be rejected, as no one can have exclusivity over a term that competitors need to use.

  • Misleading or Immoral Marks: Using terms that mislead the consumer (e.g., a dairy-free product using a cow image) or that are contrary to public order or morality.

2. Failure to Conduct a Prior Availability Search

Many entrepreneurs start the process without checking if their brand already exists, leading to conflicts.

  • Confusion with Pre-existing Marks: Not performing a thorough phonetic and figurative search (of both the name and logo) increases the risk of the application being rejected due to similarity with an already registered trademark, or, worse, facing an opposition lawsuit from a third party.

  • Loss of Investment: If the mark is denied after investing in logo design, packaging, and advertising campaigns, the cost of having to rebrand is much higher.

3. Incorrect Classification of Products and Services (Nice Classification)

The registration system operates by categories (Nice Classes). Selecting the wrong class leaves the business unprotected.

  • Wrong or Insufficient Class: Registering the trademark in a class that does not exactly correspond to the offered products or services, or failing to cover classes where the business plans to expand in the future. This limits the protection and leaves the business vulnerable to real competition.

4. Errors in Documentation and Administrative Process

The legal and formal process can be daunting for non-specialists.

  • Failure to Meet Formal Requirements: Not submitting the correct documentation, making errors on forms, failing to pay the corresponding fees, or mixing products from different classes in one application can halt (or require amendment of) the process.

  • Lack of Professional Advice: Delegating registration to non-legal professionals (like advertising agencies or attempting it alone without expertise) dramatically increases the probability of making costly errors that only become apparent years later.

5. Overlooking Comprehensive Protection and Maintenance

Registration does not end with obtaining the title.

  • Not Registering Logo and Name (Combined Registration): Registering only the name or only the logo, leaving the other part unprotected and easy to copy.

  • Believing the Registration is Permanent: Forgetting that trademark registration has an expiration date (usually 10 years) and must be renewed on time. Failure to do so results in the total loss of rights.

  • Failure to Monitor the Mark: Not watching the market after registration to detect and act against unauthorized use by third parties.

We are available to advise and assist you with the international registration of your trademark.