Many entrepreneurs attempt to reduce costs by filing a trademark application on their own. At first glance, this procedure may seem straightforward; however, problems often arise at the very early stages. Even a single mistake or inaccuracy can result in a final refusal by UKRNOIVI, which means the loss of all paid state fees and the time spent waiting for a decision. Below are the most common mistakes made during independent trademark registration and practical guidance on how to avoid them.
SUPERFICIAL CLEARANCE SEARCH
One of the most common mistakes is relying solely on searches in search engines or social media platforms. Even if no similar name is found online, this does not guarantee anything. A company that has officially registered its trademark may have little or no online presence or may operate exclusively offline.
Moreover, even searching the open databases of UKRNOIVI does not provide a 100% guarantee. First, information about newly filed applications does not appear in the databases immediately but only after several months. Second, most non-professionals look only for exact matches. However, UKRNOIVI experts consider not only identity but also similarity, where two different names may be confusingly similar. Such similarity is deemed capable of misleading consumers, and in these cases applicants almost always receive a refusal.
Therefore, neglecting a thorough preliminary search in an attempt to save money is not advisable. A professional analysis of identical and similar signs in official registers, combined with an understanding of examination practice, is the key to successful trademark registration.
DESCRIPTIVE TRADEMARK NAME
When choosing a trademark name, many entrepreneurs focus exclusively on marketing considerations, believing that the name should clearly describe the product or service and require no additional explanation. While this may be convenient in everyday use, from a legal perspective such a choice can become a serious problem.
Descriptive and generic designations are almost never registered as trademarks. The state does not allow monopolization of words that describe the type of goods, their characteristics, quality, method of production, or purpose (for example, “Natural Cosmetics,” “Kyiv Bakery,” “Professional Repair,” etc.). Such terms cannot function as unique brands because they belong to everyone.
A trademark name should be fanciful (a coined word or phrase with no direct meaning), arbitrary (not directly related to the goods or services), or suggestive (only hinting at the product’s qualities without explicitly describing them).
INCORRECT SELECTION OF NICE CLASSES
Nice Classification classes determine which goods and services are covered by a trademark. However, most self-filing applicants do not fully understand the logic of this classification and make mistakes that can nullify all their efforts.
Some applicants select too few classes, failing to consider future business development. Others, by contrast, add too many classes “just in case,” overpaying for each additional class.
The most common mistake is failing to register a trademark in Class 35 (retail and wholesale services) when manufacturing goods intended for sale through online stores or physical shops. For example, a company registers a trademark for clothing in Class 25 but does not include Class 35. As a result, a competitor may legally open a store under the same name. From a legal standpoint, no infringement occurs because the brand was not protected for this essential type of activity—trade.
It is important to note that classes cannot be changed after an application is filed. If changes are required, a new application must be submitted and the registration process must begin from scratch.
To avoid such mistakes, it is necessary to clearly identify the goods and services actually used by the business and to forecast its development over the next ten years—the period for which a trademark certificate is valid.
IMPROPER DOCUMENT PREPARATION
Many applicants consider the preparation and filing of documents a mere formality; however, this is a serious misconception. UKRNOIVI experts carefully examine every detail, and even the slightest inaccuracy may result in an official request, significantly delaying the registration process.
The most frequent errors include:
Incorrect applicant details, such as an abbreviated company name, inaccurate address, or a missing digit in the registration code.
Poor-quality trademark images, including low resolution, watermarks, or extraneous elements. Experts require a clear image that exactly reflects how the mark will be used.
Incorrect description of a combined trademark. The application must contain a comprehensive description of the designation and list all verbal and graphic elements.
Incorrect list of goods and services. Only official Nice Classification terminology may be used in the application. Arbitrary wording and errors in grouping according to class numbers are strictly unacceptable.
Each examination request extends the review period by three to six months. If multiple errors are identified and requests are issued consecutively, the process may drag on for several years. If the applicant fails to respond in a timely manner or does not correct the errors, the application will be deemed withdrawn and examination will be terminated.
Therefore, there are no insignificant details in document preparation—every comma matters. Careful preparation ensures a smooth and timely examination process without unnecessary delays or stress.
CONCLUSIONS
When registering a trademark independently, applicants face numerous nuances, and each mistake may lead to procedural delays or final refusal, rendering the invested time and money futile. In contrast, working with professionals significantly increases the likelihood of a positive expert decision and ensures comprehensive protection for your business.
Submit an inquiry, and Anton Shukhnin together with his team of professional lawyers will conduct a detailed analysis of your case and develop a reliable trademark registration strategy.