The 5 biggest mistakes when registering a trademark and how to avoid them

The 5 biggest mistakes when registering a trademark - and how to avoid them

If you want to register a trademark, you are laying the foundation for the long-term protection of your company's image. However, serious mistakes are often made, especially in the initial phase, which not only cost money, but in the worst case can lead to the trademark being canceled or costly warnings. In this article, you will find out which five mistakes are most common when applying for a trademark - and how to avoid them.

What are the biggest and most common mistakes when applying for a trademark?

The five biggest mistakes in Trademark application are: (1) insufficient trademark research, (2) choosing a non-distinctive designation, (3) incorrect or too narrow lists of goods and services, (4) self-registration without legal support and (5) insufficient trademark use after registration. If you pay attention to these points, you will secure effective trademark protection and avoid warnings or cancellation proceedings.

1st mistake: No or insufficient trademark search

Why is trademark research so important?

Many founders and companies choose a supposedly unique name and register it as a trademark - without first checking whether it is identical or similar trademarks already exists. This can have fatal consequences: Because if your trademark can be confused with an older one, there is a risk of Warning due to trademark infringement or a Opposition to the trademark application.

What does "similar" mean?

Under trademark law, not only the Identitybut also the phonetic, typographical or conceptual similarity relevant. Similar logos or slogans can also be legally problematic if they are used in related industries. If trademarks are too similar overall, they are referred to as Risk of confusion.

What needs to be done?

Professional trademark search before filing (DPMA, EUIPO, WIPO)
Similarity search incl. word components, spellings, industry comparison
Domain and company name research supplement
Obtain the opinion of a specialist lawyer if necessary

2nd mistake: Choosing an unsuitable or unprotectable trademark

What is protectable at all?

Not every name can be registered as a trademark. The Trademark Act requires that the trademark distinctive is and not exclusively descriptive is effective for the goods or services.

Common problems:

Descriptive terms such as "Autohandel Frankfurt" or "Günstige Mode" are regularly rejected.
Also merely laudatory words like "super", "mega", "top" or "best" are purely promotional and without distinctive character - they are regularly rejected.
General Generic terms or advertising slogans such as "top quality" are also not considered distinctive.
Misleading trademarks (e.g. "vegan cheese" for a dairy product) can be rejected.

What needs to be done?

Select imaginative or creative names (e.g. "Zalando", "Frosch", "Nivea")
Avoid purely descriptive or promotional terms
Check protectability through a Specialist lawyer for trademark law
Also think of the international protectabilityif export is planned

3rd error: Incorrect or too narrow lists of goods and services

Why is the Nice Classification so important?

Each trademark application must specify exactly for which Goods and services the brand should apply - the so-called Classification directory. This information determines the scope of protection of your trademark.

Common mistakes:

Formulations too narrow (e.g. only "shoes" instead of "clothing, shoes, accessories")
Unclear terms or unusual formulations
Important classes forgottenfor example:
- Class 35 for Retail services with goods of various kinds - a typical mistake in online trading!
- Class 41 for training courses
- Class 9 for software

Consequence: No protection for central business areas!

If you later discover that your trademark is not protected for "online courses" or "software downloads", for example, you must register a new trademark - Retroactive protection is not possible.

What needs to be done?

Consider early on: What do I want to offer under the brand now and in the future?
The Choose the right classes
Legally compliant formulations use
In case of uncertainties: legal assistance with class classification

4th error: Self-registration without legal examination

Why this is a risky cost-cutting measure

Anyone can register a trademark with the DPMA or EUIPO themselves - so many believe they can save themselves the legal fees. But practice shows: Registration errors are expensive.

Examples from practice:

Too general or too narrow a classification leads to gaps in protection
The brand will not registeredbecause they descriptive or non-distinctive is
An older Trademark is infringed - there is a threat Warning costs in the four-digit range

Why a specialist lawyer is worthwhile

A specialized trademark attorney can:

evaluate the protectability
carry out a well-founded research
Formulate the directory optimally
advise on international brand strategies
take over the registration on request

Cost-benefit ratio

The Costs for a lawyer are usually lower than the consequential costs of an error - not to mention damage to your image, loss of domain or legal disputes.

5. error: not using the trademark correctly (obligation to use)

What many forget: Brands must be used

A registered trademark is only protected if it used seriously becomes. After the expiry of a Grace period of 5 years can one in three the Deletion due to non-use request.

Common mistakes:

Brand is only used internally, not externally
Use in a different form (e.g. only as a logo, not as a word)
Brand is visible, but not for the registered goods or services

Even "the big players" are affected: Praktiker & Otto

Even well-known companies are losing brands due to non-use. One prominent example:

Otto and Practitioner had registered numerous trademarks, e.g. for "furniture", "clothing", "electrical appliances" etc.
In fact, they used the brands for retail services only
The trademarks were canceled because no product itself carried the brand name
Conclusion: Registration alone is not enough - the trademark must be can be used product-related

What needs to be done?

Brand right from the start Use publicly (Website, packaging, advertising)
License plate function ensure (not only as decoration or company component)
Collect evidence of use (e.g. invoices, advertising material, screenshots)

Tip: If you want to take action against an infringer at a later date, you must be able to prove the use in an emergency. can prove!

Frequently asked questions about trademark applications (FAQ)

How much does a trademark application with DPMA cost in Germany?

The basic fee for DPMA amounts to 300 € (incl. three classes) with online registration. Additional classes cost 100 € per piece. In addition, there may be Legal feesif you allow yourself to be accompanied.

What does a European trademark application at the EUIPO cost?

For a European Union trademark (EU trademark) the costs for the EUIPO:

850 € for the first class
50 € for the second class
150 € for each additional class

This protects your brand in all 27 EU member states.

How long does the registration take?

As a rule 3-6 monthsif no complaints or objections are lodged.

Is a word mark better than a figurative mark?

Word marks offer the broadest protectionas they apply independently of the design. Figurative marks usually make sense if the logo plays a central role.

Do I have to register a trademark throughout Europe or internationally?

This depends on your business model. If you are also active in other EU countries or plan to be, a European Union trademark (EUIPO) make sense and, above all, be cheaper.
For worldwide protection, the Madrid system into consideration - a International extension of the basic brand to other countries. Responsible here is the WIPO in Geneva.