Why You Should Hire A Trademark Attorney To File A Trademark Application

Hello!

Welcome Back! Now some of you may think that I am writing this article because I want you to hire me or one of my colleagues.  Now of course if you think I might be an awesome attorney, then please contact me.  LOL!  But this blog is purely to provide valuable information to people who need it.  I felt compelled to write this article because many individuals believe that the process to file a trademark application is simply filling out the application online and then Viola!, six months later you have an official trademark registration.  Is it that easy?  Well maybe about 50% off the time.  To be honest, a large portion of my client base are individuals who filed their own trademark application and it was subsequently rejected. Yes rejected. There are numerous reasons the USPTO rejects an application. The most common reasons are:

1. The proposed mark is too similar to a registered trademark.

2. The applicant submitted an insufficient specimen (trademark and/or logos).

3. The appliciant failed to prove the mark is currently being used in commerce.

4. Applicants submit items that should be sent to the US Copyright Office to the USPTO.

4. The applicant missed an all important USPTO deadline.

So what can a trademark attorney do to ensure the likliehood of success in obtaining a registered trademark that most individuals do not do?: They are the following:

1. Perform a comprehensive trademark search to ensure your mark does not infringe on a registered or unregistered mark that has priority rights.  Trademark attorneys hire trademark searh companies to do a comprehensive search of your mark.  This search will gather any information or trademarks that are similar to your trademark.   These companies search the USPTO database, all 50 states trademark databases, company names that have incorporated with the state, trade names, the Copyright Office database, and the internet. This cost for this type of search starts at $550.00.  This may sound steep, but who wants to do all of this research themselves? Remember, there may be an existing trademark that has priority rights over your trademark that is not registered with the USPTO.  A trademark that has been used in commerce first in its region has valid trademark rights even if it is not registered. I discussed this concept here.  So do not simply rely on the trademarks listed in the USPTO database.  It WILL NOT contain all valid existing trademarks that may compete with yours.

2. Analyze the contents of any comprehensive search and give a legal opinion regarding the likliehood of success of your trademark obtaining registration.  Once this information is gathered, a trademark attorney will use his or her knowledge of the trademark laws and determine whether: a) there is a competing trademark, 2) whether a competing trademark has priority (1st to use) rights over yours and vice versa, 3) whether you should pursue a trademark dispute, or 4) whether you should choose another trademark. 

3. File your application and ensure the application is worded correctly and that you have the correct specimens (evidence you are using the trademark in commerce) for submittal.  One of the top reasons trademark applications are rejected is because individuals do not submit the correct specimens.  A correct specimen for goods can be a label or a container.  A correct specimen for services can be a brochure or advertisement for services.  Often individuals simply submit the drawing (logos) or name as the specimen.  This is incorrect and your application will be rejected.

4. Make sure you do not miss any deadline for responses to a USPTO action. The USPTO reviews your application and subsequently provides several office actions before the application is offically approved and a registration issued. However, these office actions have very strict response deadlines.  If you miss a deadline, your application can be abandoned. What does this mean? You have to start over. Trademark lawyers are very careful about adhering to deadliens.  If we don't, guess what? You can sue us for malpractice. 

Lastly, many individuals use companies like Legal Zoom to file trademark applications.  These companies DO NOT perform comprehensive searches.  I repeat they DO NOT perform comprehensive searches.  They only check the USPTO database.  So you can pay this company around $550 which includes the $325 USPTO filing fee, and cross your fingers.  If the applications is rejected because the USPTO did their own research and found a competing right, you are basically out of luck.