pre-registration mark

The main mistakes to avoid before registering your trademark

Many applicants make the same mistakes when starting their trademark application. These mistakes can cost them dearly and seriously jeopardize the protection of their trademark. What are these mistakes?

Choosing a legally weak brand

The first mistake made by applicants often consists in wanting to adopt a very "meaningful" trademark, i.e. a trademark that alone explains the activity of its owner. For example: MARK CONSULTING (for trademark law advice), DRONE & DATA (for drone data collection services), POMME ET ARTICHAUT (for early delivery services), VERY PROPRE (for dry cleaning services or washing products).

These marks are called "descriptive marks", because they either directly describe the goods and services of their owner (MARK CONSULTING), or indirectly one of their characteristics (VERY PROPRE). This type of trademark cannot be registered because they are composed solely of terms that must remain available to all market players, without being appropriated by any one of them. Consequently, if such a trademark is filed before the INPI (or any other trademark office), it will in principle be refused. The main consequence is the loss of the costs incurred for the filing, which are not reimbursed.

Our advice: it is therefore preferable to look for an arbitrary, so-called "distinctive" trademark that has no connection with your sector of activity.

To go further, see our article on how to find a good brand.

Do not search for prior art.

Prior art searches allow to know the legal environment of a brand. In practice, this involves searching among the main prior opposable rights (trademarks, company names, domain names) for those that could represent an obstacle to his project.

Many applicants settle for identical searches, sometimes only on Google. However, it is very important to carry out these searches on the INPI databases, and especially to go and check which of the only similar prior rights could be enforceable. Most of the time, the real obstacles lie among prior trademarks similar to his project, whereas identical searches have not revealed anything embarrassing.

Poorly drafted trademark wording

The wording is the list of goods and services covered within the repository. The choice of the wording of one's trademark is undoubtedly the most strategic and crucial moment of the filing. Indeed, it will determine the scope of protection of the trademark. Poorly drafted wording can greatly limit or even completely eliminate trademark protection. Applicants, relying on the INPI's wording proposals, often miss their core business either partially or completely and become owners of a trademark that serves no purpose. Moreover, since the INPI's proposals are often very broad, most applicants request protection for many products and/or services that do not interest them, thus significantly increasing the risks of third party action against them: indeed, a third party who owns a prior right in a field covered by the trademark but who is not interested in the applicant may act against him and request total withdrawal, even though he would not have acted if the wording had been more restricted. For more information, see on classes of goods and services.

Our advice: you should only target in the wording the goods and services that interest you, but above all you should have a tailor-made wording, ideally drafted by a lawyer specialised in trademark law.