The Top 5 Trademark Filing Mistakes Attorneys Can Avoid
- Tamika Adams
- Sep 27
- 2 min read
When it comes to trademark filings, the smallest mistake can snowball into costly delays—or even a refusal. Attorneys know this, but with packed caseloads and constant client demands, it’s easy to overlook details. Here are the top five pitfalls to avoid (and how to sidestep them like a pro).
1. Getting the Owner Information Wrong
Filing under the wrong legal entity or individual name is one of the most common—and most damaging—mistakes. Once submitted, it’s almost impossible to correct without starting over and filing a new application, incurring additional costs and loss of the benefit of the earlier filing date.
Pro tip: Double-check the corporate documents, operating agreements, and assignments. If ownership is murky, slow down and get clarity before filing.
2. Choosing an Overly Broad (or Too Narrow) Identification of Goods/Services
The ID section isn’t the place for guesswork. Too broad, and you risk Office Action refusals. Too narrow, and your client may end up without the protection they really need.
Pro tip: Use the USPTO ID Manual as a guide, but tailor it to the client’s actual (and future) use. Think strategically about expansion. Be mindful. As of January 18, 2025, a fee is now in effect for customizing the goods/services descriptions. There is even an excessive text surcharge for anything over 1,000 characters.
3. Misunderstanding Filing Basis (1(a) vs. 1(b))
Confusing “use in commerce” with “intent to use” leads to refusals, missed deadlines, or unnecessary amendments.
Pro tip: Confirm whether the mark is already being used in interstate commerce. If not, file under 1(b) and maintain a strict docket of deadlines for the Statement of Use. Ensure your clients understand that mock-ups do not constitute use.
4. Ignoring a Proper Clearance Search
Skipping a clearance search (or relying only on a “quick look” in TESS) can set clients up for opposition battles down the road.
Pro tip: A comprehensive search—covering phonetics, spelling variations, and common law use—isn’t optional. It’s your client’s first line of defense.
5. Overlooking Deadlines and Extensions
Even the sharpest attorneys can miss a USPTO deadline, especially when juggling multiple clients. Late filings mean extra fees—or worse, abandonment.
Pro tip: Use a reliable docketing system (or outsource to an IP paralegal team like Paralegal Virtual Solutions® ) to ensure nothing falls through the cracks.
Final Thoughts
Trademark filings can feel routine, but the devil is in the details. Avoiding these mistakes not only saves clients money and stress but also strengthens your reputation as a meticulous, trusted advisor.
And if you’d rather not sweat the small stuff? A skilled virtual IP paralegal team (hi, that’s us!) can help you file correctly, track deadlines, and keep your practice running smoothly.
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