Why Many Trademark Applications Are Abandoned and How to Avoid It
Many business owners try to handle their trademark applications on their own to save money, and I totally get it – saving where you can is part of being an entrepreneur. But this is one area where cutting corners can cost you more in the long run. Your trademark is more than just a legal formality, it’s tied directly to your reputation. It tells the world that you are the trusted source of your product or service.
Here’s the catch… Trademarks aren’t guaranteed. The application process isn’t as simple as submitting a form and waiting for approval. It requires careful planning, thorough research, and precise execution. Without these, your application could be abandoned, leaving your brand unprotected.
In this post, we’ll explore the most common reasons DIY trademark applications fail and ultimately get abandoned and how you can avoid these pitfalls.
What Is an Abandoned Trademark?
An abandoned trademark occurs when the application process isn’t completed successfully. This can happen for several reasons, such as failing to respond to USPTO office actions, or missing deadlines.
The consequences of an abandoned trademark are significant. Not only will you lose the filing fees and time invested, but you’ll also leave your business exposed to risks like infringement or forced rebranding. Worse yet, starting over can be even more expensive and time-consuming than getting it right the first time.
5 Top Reasons DIY Trademark Applications Are Abandoned
Number One: Incomplete or Inadequate Trademark Searches
One of the biggest mistakes DIY filers make is skipping a comprehensive trademark search—or conducting only a superficial one. While it’s easy to check the USPTO database for exact matches, the legal standard for trademark similarity goes beyond identical names.
Here’s why this matters…
Marks that are phonetically similar, have similar meanings, or look alike can still be considered confusingly similar. The USPTO examines the relatedness of goods and services. For example, “Lion Coffee” and “Lion Tea” could be seen as too similar, even though they’re different products.
If you don’t conduct a thorough search, your application may be refused for likelihood of confusion with an existing trademark. Worse, you could face legal disputes if another trademark owner feels your mark infringes on theirs.
Number Two: Incorrect Classification of Goods and Services
Every trademark application must specify the goods or services the mark will represent, categorized under international classes.
Two common DIY trademark mistakes include selecting overly broad classes to cover everything, which can lead to refusals.
Choosing incorrect classes, resulting in incomplete or unprotectable trademarks.
For example, if you’re trademarking a logo for a clothing line but accidentally file under a class for furniture, your application won’t align with your actual business. This will lead to a rejected application or a trademark that doesn’t fully protect your business activities. Once a trademark is registered, you can’t change the class or broaden its scope to cover more services – this would actually lead to you having to file a new application completely.
Number Three: Failure to Prove Proper Use in Commerce
Timing is critical in trademark applications. Many DIY applicants file their applications before they’re fully prepared—such as when their website is live but the product or service isn’t yet being offered. While we encourage applicants to file as soon as possible, even before their service is offered, it must be done correctly. To complete the registration, you’ll eventually need to provide a valid specimen showing how your mark is used in commerce.
The issue arises when applicants receive preliminary approval and then prematurely submit their specimen with the statement of use before their mark is genuinely in use. If the specimen is invalid or doesn’t meet the requirements, the application cannot be corrected and will be abandoned, forcing the applicant to start over. This can be a costly and time-consuming mistake that proper guidance can help you avoid.
Here is an example of proper Trademark use -If you’re filing for a trademark for your clothing brand, submitting photos of clothing tags, product packaging, or online listings featuring the trademark is required. A placeholder website or mockup won’t suffice.
Number Four: Mishandling USPTO Office Actions
After you file, the USPTO may issue an office action—a formal letter outlining issues with your application. Many DIY applicants fail to respond adequately, leading to abandoned applications.
Common office action issues include:
- Improperly worded disclaimers.
- Issues with the provided specimen.
- Likelihood of confusion with an existing mark.
- Amendments to ID of goods/services.
Without legal expertise, it’s challenging to understand what the USPTO requires and how to resolve the issues.
Number Five: Missing Deadlines or Filing Errors
Trademark applications come with strict deadlines. Missing one—whether it’s for responding to an office action or filing required documents—can result in automatic abandonment. Additionally, errors in the initial application, such as incorrect ownership details or missteps in electronic filing, can jeopardize your entire application.
The Cost of an Abandoned Trademark
Abandoning a trademark application isn’t just frustrating—it’s expensive. You lose the filing fees (often hundreds of dollars per class) and the time invested in preparing and filing the application.
But the biggest cost is what you don’t see right away. Without a registered trademark you could miss out on potential business opportunities, your brand may not be eligible for programs like Amazon Brand Registry or certain partnerships. Vulnerability to infringement: If someone else registers a similar mark before you, your options for protecting your brand diminish.
Rebranding costs: Rebranding due to a refused trademark can cost thousands of dollars in logo redesigns, marketing materials, and rebuilding customer trust.
How to Avoid Abandoning Your Trademark Application
- Conduct a Professional Trademark Search: Work with a trademark attorney who can conduct a thorough clearance search, analyzing potential conflicts and ensuring your mark is eligible for registration.
- Get Expert Help with the Application: Filing a trademark involves strategic decisions, from selecting the correct classes to drafting detailed descriptions. An attorney can help you avoid errors that lead to office actions or refusals.
- Respond to Office Actions Properly: If you receive an office action, don’t panic. A trademark attorney can guide you through the response process, ensuring your application stays on track.
- File When You’re Ready: Make sure you’re actively using your trademark in commerce or have clear plans to do so. Your attorney can advise on timing and help prepare acceptable specimens.
DIY trademark applications often feel like a cost-saving move, but the risks of abandonment, reapplication, or lack of actual protection even if there is a registration, can end up costing far more in the long run. Your trademark is a valuable asset – an investment in your brand’s growth, security, and longevity.
If you’re ready to avoid these pitfalls and register your trademark with confidence, let’s connect. We are here to help you navigate the process and ensure your brand is fully protected.
Take the first step today. Schedule your free consultation and get your free legal action plan from one of our DiAngelo Law team members.
