If I had a nickel for every time someone tried to explain to me why they don't need a lawyer to help them file their trademark application… jeez.
Do you really need a lawyer to file your own trademark application?
The simple answer is, no, you don't need a lawyer to submit your trademark application. At first glance, it actually seems pretty easy. But, as with all things that involve lawyers, the bigger story is a little bit more complicated.
In today's post, I'm going to share with you some of the major benefits you will get by hiring a lawyer to file your trademark application for you, as well as show you why the money spent on a good trademark attorney is actually a pretty smart investment when considering how much money it could save you in the long run.
Isn't Filing a Trademark Application an Easy Process?
As I said before, on it's face, filing a trademark application seems to be fairly straightforward. You fill out some forms online, pay a fee, and voila, you submit the application. What's the big deal?
Here's the big deal…
Are you aware that the vast majority of business owners that attempt to file their trademark application on their own actually end up abandoning their application at some point because they don't know what to do when the initial refusal comes in from the USPTO? Or they try to respond to the initial refusal, are unsuccessful in their efforts, waste lots of their own time and resources, and then hire a lawyer when they realize they are in over their heads?
What makes Registering a Trademark so Difficult?
There are four main obstacles to acquiring a valid federal trademark. They are the initial naming process and trademark search, the application itself, handling correspondence from the USPTO, and the additional deadlines and hassles of dealing with the entire process. Let's take these one at at time.
Conducting an Appropriate and Satisfactory Trademark Search
Conducing a trademark search is a fairly straightforward and easy process, assuming you have picked an appropriate name for your business. However, straightforward and easy doesn’t necessarily mean that you should conduct this step without the help of an experienced trademark attorney.
This is one area where investing in a trademark attorney can really save you some bucks in the long run. Although I have previously discussed how to conduct a proper trademark search, I still advocate hiring a lawyer to conduct a comprehensive trademark search for you.
Let’s say you do a quick search on the USPTO Tess System, or perhaps you ignore this step of the process entirely. If there is another, competing trademark that is either identical or similar to yours and it is already registered, your application will be denied and you can kiss your filing fee good-bye with nothing to show for it.
In addition, let’s say you do run a search in TESS and you don’t find anything that would cause you concern. Most business owners fail to do an adequate common law or state specific search of non-federally registered marks. As attorneys, we have access to powerful software that can conduct more comprehensive searches, and we can issue you a legal opinion regarding whether you should or should not proceed with your trademark application.
The Trademark Application
There are two particularly tricky parts to the trademark application which you must be aware of, and which an attorney can provide a lot of assistance with.
The first section to consider is which class of goods or services you are decide to register under. If you classify your goods and services incorrectly on the initial application, you could be asked to pay an additional fee to make a correct reclassification on an amended application.
The description of goods and services can also be tricky. You want a broad classification to give you the most protection over your mark, while still being narrow enough for the USPTO to approve it. If you description is incorrect or overly broad, it will trigger an “office action”, also known as an preliminary denial of your application. In almost all cases, responding to an office action will require the assistance of a lawyer, as you will need to use legal language, cite statutes and/or case law, and in general, know what you are doing from a legal standpoint. I doubt that many business owners have any interest in writing a complex legal brief in response to an office action to get their trademark approved.
Oppositions and Petitions to Cancel
So you make it through the application process, and you think you are home free, right? In most cases, yes, getting through the application is the most difficult part of the process. But you may not be out of the woods just yet.
Before your mark can be registered, the examining attorney at the USPTO will “publish” your mark in the weekly publication for the USPTO. Any party that believes it may be damaged by the registration of your mark has 30 days from the publication date to file an opposition to the registration of your mark.
Alternatively, if your mark does get registered, another party can seek to cancel your registration after it has been registered.
In either of those situations, we highly recommend that you contact a licensed attorney to represent you before the TTAB (Trademark Trial and Appeal Board). Here is what the TTAB has to say about you representing yourself:
While you can represent yourself in a TTAB proceeding, you might wish to consider hiring an attorney to represent you. An opposition or cancellation proceeding is just like a case in court. Even if you do not have an attorney, you will be expected to follow the Rules of Practice for the TTAB and the Federal Rules of Evidence, which are followed by the TTAB. You may find it difficult to properly conduct your case without legal counsel.
Other Issues that Can Pop Up in the Trademark Application Process
As with any legal proceeding, there are important and strict time deadlines that come with filing a trademark application. If you file your application and then get busy working on your business, it’s possible that you could inadvertently fail to respond timely to an office action or some other correspondence. A mess up like that can cause your application to be abandoned as discussed previously.
In addition, after your mark is registered, you need to monitor your mark insuring no one is infringing on your intellectual property, as well as insuring that you are not using the mark in a manner in which it was not originally intended.
What’s the Takeaway here about the Trademark Application process?
You’re a busy entrepreneur. You want to build your business and protect your intellectual property. Your to-do list is probably a mile long. Filing and monitoring trademark applications is probably not high on your list of priorities, nor should it be.
Leave the legal work to the ones that have been trained to handle these issues, the lawyers. At Hawthorn Law, we work with online businesses and entrepreneurs to protect their intellectual property, including their trademarks. If you have questions about how we might be able to help you, fill out our online form today to schedule a free strategy session.