Even though anyone can file their own trademark by visiting the USPTO’s website, from a practical standpoint hiring a trademark attorney is highly advisable. Filing a trademark application is not merely about filling out the correct forms; there are many rules and intricacies involved which only an experienced trademark attorney can navigate through. Some of the issues a trademark lawyer can assist an applicant with include:
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- Trademark Search: A successful preliminary search is then followed by a full search to ensure the proposed name is available for registration. This comprehensive search not only includes federal databases but also state databases. A search of state databases, i.e., fictitious business names or state business registrations, is crucial since trademark rights in the U.S. are created once a mark is in use. So, in order to prevent potential infringement lawsuits with a common law trademark, it is absolutely necessary to search state databases as well.
- Determining Registrability: Reviewing the potential trademark to determine if it is generic or descriptive – both of which would prevent it from being registered. If a mark is deemed generic, it will not be registered and the applicant would have wasted money on the filing fee. If a trademark is potentially descriptive, it may be rejected by the examiner unless the applicant can argue that the potential trademark has somehow become inherently distinctive. An attorney can advise on both of these issues.
- Confusingly Similar: An attorney can analyze the proposed trademark under various legal theories to determine if it may be confusingly similar to an existing trademark, thus preventing it from being registered. This often requires a legal analysis of various factors created by courts over the years to assess whether two competing trademarks are confusingly similar.
- Statutory Barriers: Determine if the mark is barred from registration if it falls into a category which would automatically prevent it from registration. Some of these categories include: functional, informational, deceptive, insignia of the U.S., surname, falsely suggestive, geographically descriptive, or contains the Swiss coat of arms.
- Compliance with USPTO’s Policies: Ensuring the TEAS application is filled completely, and complies with all technicalities, i.e., proper disclaimer, foreign equivalents, specimens of use, to name a few.
- Date of First Use: Determining the date-of-first use to potentially overcome a competitor’s first use is a critical issue that an attorney will advise a potential client on.
- Office Actions: Responding to substantive Office Actions, which often require legal research, analysis, and writing.
- Use in Commerce: A prerequisite to a federal trademark registration is use in commerce. If a mark is not used in commerce, an attorney may have to determine whether to file an Intent to Use Application.
- Internal Class Determination: Selecting the correct International Class for the goods or services being used. There are a number of reasons which may warrant selecting either a broad or a narrow description of the goods or services to overcome a potential rejection by the Trademark Office.
- Appeals: If an application is rejected by the USPTO or there is a dispute which cannot be resolved, a licensed attorney is much better equipped to appeal the matter to the Trademark Trial and Appeal Board.
- Foreign Applicants: Foreign applications must use a U.S. licensed attorney to file their applications.
Filing a trademark is considered engaging in the “legal process” and is usually a trap for the unwary. Failure to hire an attorney may jeopardize your trademark application and cause you to lose your rights. If you need assistance with filing or maintaining your trademark, please contact us today.
