Is Your Trademark Salvageable? (What to do if you made a mistake on your application)

Finally did it. You filed your trademark application with the U.S. Patent and Trademark Office.

You hit submit. You get that confirmation email. And for the first time, it feels like, wow, my brand is real. But then later that night, you reopen that email, you know, just to admire it.

And your stomach drops. We've all been there. You made a mistake. Maybe you listed the wrong owner.

Maybe the goods and services that you rushed to put together on your application don't really match what you're selling or intending to sell. Maybe you did something like uploading the wrong logo. So now you're asking yourself the one question that keeps all business owners up late at night. Did I just make a huge mistake?

Did I just ruin my trademark application? Or is this something that can be salvaged? In today's video, we're going to follow the journey of one fictional, I might add, business owner who made a mistake on their application and had to find out if this is something that could be saved or if they had to start the whole process all over again. So I want you to meet Alex.

Full disclosure, Alex is not somebody I worked with, but it really is the idea of a number of different people that I've worked with over the years and a number of different issues that I've seen with trademark applications. So that's why we're using this Alex character. Now in this example, Alex runs a small but growing skincare brand. He's actually doing pretty well.

He sells a lot of handcrafted products online through his Shopify store. And after months of building his business, Alex finally decides that now is the time to protect his brand with a registered trademark with the USPTO. Now, maybe some of you can relate to what Alex is going through. He knows this is important.

He goes online. He does some searching through Google. Maybe he goes to chat GPT. He gathers a bunch of information online.

He runs the application with the USPTO, pays the fee. He goes ahead. He submits it. And he feels like, you know, honestly, he's crossed a big finish line.

Like he's good to go. But a few days later, Alex takes a closer look at his application and then he sees it. On the application, Alex has listed the owner of the trademark as his own personal name, not the LLC that he's been running for the past year or so selling skincare products online. Or think of a different example.

Maybe his ownership is correct, but Alex notices that the list of the products and services that he listed on his trademark application does not quite match up with what he's actually selling in his online store. So the excitement that Alex felt just a few days ago is now suddenly gone and it's filled with panic and dread. Alex is now on this quest. Can his application be fixed or did this one mistake doom everything?

And I want to thank Ibrahim for submitting a question last week that said, can you create a how-to video to fix the trademark if you messed up? So that was the impetus for today's video. Thanks, Ibrahim. Again, Alex does what most people will do in this situation.

They start researching. They start asking questions online. They go to like Reddit or again some sort of AI software or Google or YouTube. That's how most of you probably find me, right?

And he's trying to understand what does this mistake really mean for his trademark application? Is it something that he can fix And this is where Alex discovers a key piece of information that not all trademark mistakes are created equal There are three basic categories of mistakes We going to talk about them today First, minor technical errors. These are small things. A typo in your name.

Maybe your description's not quite right, but it's not too far off. Maybe your address is wrong or there's a small typo in your address. Maybe you submitted a specimen, but it probably could be a little bit better. these mistakes are annoying they are completely fixable and something that you can take care of without too much trouble the second class of mistakes we're going to talk about today are more serious but oftentimes they're also fixable so here we're talking about your goods and descriptions that there may be a little bit vague and need to be fixed up a little bit and maybe they're a little off but they're still in the same ballpark of what you're actually selling on your online store and in many cases you can narrow or clarify your wording later as long as as you're not trying to expand into new or different goods or services.

And then there's the third category. These are the fatal mistakes. And this is where the story gets real. Filing in the name of the wrong owner.

So like yourself, when you actually have an LLC that's running your business. Listing goods or services that don't actually comport to what you're actually selling in the marketplace. Trying to switch to a new or different brand name or logo after you've already filed your application. These issues and mistakes are not just typos.

They really go to what we call the core of your application. In many situations, they just can't be fixed. Application may be considered void, and in many cases, the only option you have is to just file a new application. This is where Alex realizes that he needs to really figure out which category his mistake fits into.

Now, fortunately for Alex, he caught this mistake early on, and this is very important. His application hasn't been approved for publication yet, and no final office action has been issued. This means he still has some tools available to analyze his application and figure out what to do. First, if Alex's issue is minor, again, typo, maybe the address is a little bit wrong, he can often submit an amendment to the same system that he used to file his original trademark application.

This allows Alex to correct the technical details of his application without changing the crux or the core of his application itself. Now, if we're a little bit further on down the process, it's possible that an examining attorney will have issued an office action. What is an office action? It's basically a letter from the attorney assigned to your file that says, here's the problems we see with your trademark application and we need you to get these fixed.

So Alex can respond to that office action and in that response, he can clarify the wording. Oftentimes the examining attorney will tell you exactly what type of wording they want you to use. That's something you need to pay attention to. And so long as you're narrowing or clarifying the products or services you've listed on your application, that should not be a problem.

It's possible Alex may need to fix some disclaimers or other required language that he needs to include with his application. Or in some cases, maybe his specimen was a little weak and the examining attorney would like him to submit a new specimen. So if Alex mistake lies in that first or second category of mistakes that we talked about earlier and these are minor or serious but fixable mistakes there a very real chance that Alex application can be saved but and I gonna need a sip of my coffee before I talk about this one so do you remember that fatal category let's say that Alex learns that the real problem with his application is ownership Alex's LLC is the entity that's actually using and going to own the trademark that on his application Alex listed himself as the owner of the trademark.

That's a big no-no. This is not just a spelling issue. It's a question of who has the legal rights to the trademark. And in many cases, this type of ownership issue can't be cured just by amending the application.

If the wrong party filed the trademark application from the very beginning, then the rules and the law will treat your application as having never really belonged to the true owner at all. And if you're the wrong owner, you can't actually assign the rights to the correct owner. It's a little legal nuance that gets kind of confusing and And frankly, I'm sorry because it's lawyers that came up with this, but it is what it is. So in this scenario, the hardest advice for Alex is likely going to be the advice he wants to hear least of all.

And that's the needs to file a new trademark application. There is one other mistake that we need to talk about that also could theoretically be fatal to Alex's application. And if you guessed he missed a deadline, you're on the right track. Imagine a different Alex, an Alex that's not nearly as proactive as our hero in this story.

And this Alex is a little lazy, doesn't check his email much. and he actually missed the email from the trademark office that said that there was problems with this trademark application. Now the problem here is that the deadline to respond to these type of office actions is very short. It's 90 days.

I know that seems like a long time, but trust me, it is not. And if Alex missed the response deadline, then his application is going to be deemed abandoned. This happens all the time to people who file their own trademark applications. Trust me on that.

This may sound like the end of the story, but fortunately for our hero, it is not. If the deadline was missed unintentionally and Alex acts quickly enough, he may be able to file what's called a request to revive or a petition to revive his trademark application. And if that petition is granted, now there's going to be some additional fees that come with doing that. Then it brings Alex's application back to life and he can continue down the process of registering his trademark.

And this time, I hope he includes calendar reminders and ticklers in his email system so he doesn't miss another deadline. So those are all the different types of mistakes or issues that you may face and that Alex is going to face with his trademark application. So now we come to the point of our story where Alex has to figure out what is he dealing with here? Are these serious issues that cannot be cured or are they relatively minor issues that can be cured?

If it's a wording issue where it can be narrowed down or the descriptions can be narrowed down and fixed, a specimen that can be swapped, or there's some other technical detail that's not going to affect the heart of the application, then Alex can probably use some of the forms available at the USPTO website to fix these mistakes. The application is going to survive. It's a little scarred. It's a little bit worse for the wear, but it's going to be okay.

If Alex learns that the wrong entity was listed as the owner, or the goods in the application don really match what he selling then there no clever form at all that going to fix the issues that Alex is needing to confront So Alex needs to decide not to cling to a flawed application just because he got all his time and money spent investing in that application. Instead, the better option is frequently going to be to just go ahead and file a new application, pay another fee, and move on with your life.

And in that new application, you want to make sure you have the correct owner, proper goods and services, a good specimen, and you actually file for the mark that you're using in your business and not some random mark that you're not quite sure about yet. Now, this may feel like you're going backwards. If you're Alex and this is the decision you've come to, this may feel like you're taking a step back. But trust me, you're on firmer legal ground when you do it.

It's the responsible, it's the adult thing to do. If you've missed a deadline, which I know some of you have, you're probably watching this thinking, what do I do? I missed my deadline. Well, now you've got your own issue that you need to deal with.

Hopefully, you've learned that paying attention to these official emails, reading everything you get from the USPTO and tracking your deadlines is not something that's optional. It's a very real part of this process, and it's also part of protecting your brand. So what did we all learn from Alex's journey today? If you're trying to file your application for a trademark registration on your own, here's what you need to know.

And before you hit submit or as soon as you notice a problem with your application, you need to ask yourself these four questions. One, is the proper legal owner listed on the application? Seems pretty basic, right? But a lot of people mess that up.

Second, do the goods and services that you've listed on your application match what you're actually selling in your business? Third, does the mark in your application actually match the mark that you're using in your business? You'd be amazed at how many people tell me that they're seeking to register a trademark for a certain phrase or a certain logo. And then when I actually look at their website and how they're using it, I don't even see any evidence that they're using that name at all.

It's amazing. And lastly, number four, are you on top of the deadlines? and are you paying attention to emails from the USPTO? Every notice from the trademark office matters, and if you miss just one, it could put your entire application at risk.

So if your core pieces, the owner, the goods and services, the mark itself, if those are all looking good, then you just need to know that many of those smaller errors can be fixed with a simple amendment or in a response to an office action. But if one of those core pieces is wrong, the answer might be to stop trying to patch together a bad application and just file a new correct application from the beginning. Can a trademark application be salvaged after a mistake? Sometimes, absolutely.

Sometimes, not so much. The key is knowing which type of mistake you're dealing with and acting quickly and strategically once you spot it. If you're looking at your own application right now and you're really not sure which category you're in or whether you've got a mistake that can be fixed or not fixed and you just don't know, this is the point where talking to a trademark attorney can save you a lot of time, money, and worry. Now, if you found this breakdown of Alex's journey helpful, Let me know down in the comments what part of the trademark process feels the most confusing to you.

I'd love to make future videos that walk you through this more in-depth, step-by-step. Thanks so much, folks. See you in the next video. Oh, don't forget to check out this other video, I think right here.

It's going to teach you more about how to DIY your trademark or otherwise legally protect your business. I'll see you in the next video.