Trademarks. They don't file themselves.
The act of securing a registration for your trademark seems simple: you create a word or symbol, you put it on your product or use it with your service, and you fill out the appropriate form on the USPTO website. Indeed, you do not even need an attorney to fill out or file a trademark application on the USPTO’s website. You can also engage in some of the preliminary steps of the trademark registration process including conducting a trademark search without the assistance of an attorney. So why engage an attorney to help you through the process?
Requirements for properly drafting a trademark application are stringent and require particular knowledge and skills that are only learned through years of experience in filing trademark applications and interacting with the USPTO, not to mention the familiarity with the preliminary steps of brand selection, searching, and clearance.
The services of an attorney can be extremely valuable in the search and clearance stages where it is absolutely critical to lay the groundwork for a strong trademark. It is easy enough to use the trademark search function on the USPTO to determine whether your trademark is already in use. The same can be said of Google and conducting a search to find out whether other companies are using your trademark. However, what these preliminary searches do not tell you is whether your particular mark is a strong trademark or whether there are other trademarks that, based on the conceptual meaning or similarity in the way they sound, will be cited against your mark by the USPTO. In both cases, an attorney can guide you by (1) offering feedback on brand selection strategies so that you begin the trademark application process with the strongest mark possible; (2) advising you on the scope of the trademark search you should conduct; and (3) providing an opinion on the results obtained from the trademark search.
At the application stage, trademark laws are complex and proceeding on your own could result in your failure to comply with all the necessary trademark requirements including providing proper specimens showing trademark use to the USPTO, overcoming rejections based on similarities between your trademark and another trademark, or other defects in the substance of the mark itself. While it is possible to respond to these rejections, a response may narrow the scope of your rights to use a particular trademark, which could ultimately severely impact the value of your trademark or create an opportunity for infringement later if you have obtained narrow rights that are restrictive of the natural growth of your product or service offerings.
Requirements for properly drafting a trademark application are stringent and require particular knowledge and skills that are only learned through years of experience in filing trademark applications and interacting with the USPTO, not to mention the familiarity with the preliminary steps of brand selection, searching, and clearance.
The services of an attorney can be extremely valuable in the search and clearance stages where it is absolutely critical to lay the groundwork for a strong trademark. It is easy enough to use the trademark search function on the USPTO to determine whether your trademark is already in use. The same can be said of Google and conducting a search to find out whether other companies are using your trademark. However, what these preliminary searches do not tell you is whether your particular mark is a strong trademark or whether there are other trademarks that, based on the conceptual meaning or similarity in the way they sound, will be cited against your mark by the USPTO. In both cases, an attorney can guide you by (1) offering feedback on brand selection strategies so that you begin the trademark application process with the strongest mark possible; (2) advising you on the scope of the trademark search you should conduct; and (3) providing an opinion on the results obtained from the trademark search.
At the application stage, trademark laws are complex and proceeding on your own could result in your failure to comply with all the necessary trademark requirements including providing proper specimens showing trademark use to the USPTO, overcoming rejections based on similarities between your trademark and another trademark, or other defects in the substance of the mark itself. While it is possible to respond to these rejections, a response may narrow the scope of your rights to use a particular trademark, which could ultimately severely impact the value of your trademark or create an opportunity for infringement later if you have obtained narrow rights that are restrictive of the natural growth of your product or service offerings.
Anecdote 1: The USPTO is quicker than the unsuspecting trademark owner.
The USPTO allows any person to file a trademark application personally. No special training, no certification, and no attorney needed. The whole trademark filing process can be done electronically and is more seamless now than ever before. The simplicity is deceptive, however, because there are many pitfalls that a typical applicant filing without an attorney falls into. Personally, I run into the following issues:
- The trademark that the applicant filed for is either already taken or is very similar to another trademark that is registered or pending in the trademark office.
Problem: the applicant did not perform a search for other trademarks in the U.S. trademark office’s database. Many people assume that if they run a search for the literal trademark element and there are no matches, then they are home free. However, the USPTO does not just look at an applied-for mark and find identical matches. It conducts a much more detailed search that includes trademarks that contain the same elements (even if not in the same literal order) and marks that sound alike. It is very difficult for any given applicant to think of all the potential matches between their mark and other trademarks. The USPTO’s search system is computerized, so they have a much better chance of finding confusingly similar matches that a standard search by the applicant may not produce. Also, every examiner in the trademark office is a real life, living breathing attorney, so they may look at things a little differently than an applicant.
Solution: have a professional trademark completed, with an opinion from an attorney on the potential conflicts a trademark application may face. A professional trademark search will uncover all of the same matches that the USPTO’s search uncovers during their search and MORE. Additionally, having the report examined by an attorney, with an in-depth opinion from the same attorney on the registrability of your trademark will give you a more complete picture of how your application will be treated by the trademark office. If there are potential matches between your mark and another trademark, an attorney can help you avoid a potential conflict by telling you which trademarks may be registered as an alternative or (if the applicant doesn’t want to change their mark), what goods and services an applicant can list in their application. An opinion letter from an attorney can also be important later on if the validity of your trademark is challenged by a third-party. A court will consult the opinion and consider it as evidence that you did not intend to infringe on a third-party’s mark or (in any event) there is good reason to believe that there is no likelihood of confusion between your mark and the active trademark. - The trademark that the applicant filed does not match the specimen that the applicant provided in their trademark application.
Problem: the trademark that a person filed for did not match the image of the product bearing the mark. When you apply for a trademark, you must specify whether the mark is currently being used in the marketplace or whether you intend to use the mark at a later date (if, for instance, you are developing a product but you are not quite ready to go to market with that product). If you file an application with a claim that you are using the trademark, you have to show proof that the mark is actually being used (surprise, surprise!) If you have a product, you have to show that the mark appears on the product itself, packaging, or labels attached to the product. The mark preview that you provided in the application has to match the mark as it is displayed in the proof that you provide to the trademark office.
Solution: while a simple eye-ball comparison might suffice as proof that a trademark (as filed-for) matches the mark shown in the image that you provide verifying that the trademark is being used, an attorney can provide you with information on all the nuances of the mark-proof requirement. Moreover, it is important that the company has quality-control measures in place to monitor for the proper use of a trademark on the product itself, product labels, and product packaging. The trademark owner is obligated to continue using its mark during the 5-year period that the trademark is registered. During this five year period, the mark must be used consistent with the mark as-registered. If the mark as it appears on the product does not match, then the trademark risks being cancelled at a later date by a third-party (who may or may not be a competitor that wants to use a similar mark on their product). - The trademark applicant provided an improper specimen in the application that fails to verify that all goods and services listed in the description in the application are in use.
Problem: a “specimen” is the proof that you submit to the trademark office to show that the trademark is actually being used in connection with your product or service. It doesn’t have to be an actual product or even a tag or box that contains the trademark. Instead, you can submit a picture of the product, package, or some other item that accompanies the product showing the mark clearly in connection with the product. This saves you a lot of time and hassle. The catch is that the picture of the product must match up with at least one good claimed in your goods description originally filed with the application. So, for example, if you originally filed your trademark application for different types of toys (lets say specifically “miniature plastic cars, plastic trains, and plastic airplanes”), you would have to produce a picture of at least one plastic car, plastic train, or plastic airplane (but not necessarily all). This task becomes even more difficult if you have multiple products that span multiple goods classes.
Solution: an attorney can help you with both filing a proper specimen and putting in-place a procedure for assisting with this due-diligence operation in the future. Strictly speaking, you should maintain proof of all trademark uses on all products for each year that you plan to keep the trademark active. An attorney knows how to secure the right specimen and how to continue documenting your company’s trademark use.