Remember that just because you can file your own trademark applications doesn’t mean you should. When you file a trademark application, it is the start of a legal proceeding, and as such you may want to have the help and experience of competent trademark counsel to guide you through the process. Numerous reports have found that by hiring trademark counsel your application is 82% more likely to be approved for registration than if you go it alone. Consider these factors, if you decide to do it yourself:
1. Choosing your mark
I get calls all the time from potential clients who claim to already have searched their mark in the USPTO database, only to learn later there is a mark that is a potential issue to their trademark. Why? This is because the potential client either did not search properly or did not alternate spellings, foreign equivalent marks or most importantly, marks that would be considered legally related. An experienced trademark attorney should always conduct the search to be sure it is done properly. Searching is an art form not a science. Trust the searching to those trained to do so.
2. Ownership issues
This is by far the #1 issue we see in pro se applications. If your trademark application is not properly filed in the name of the proper trademark owner, this can be difficult and sometimes impossible to correct later. Your application and resulting registration may become void and/or subject to cancellation.
3. Specimen issues
Your trademark must be used in connection with the goods and/or services for which you are applying and you must demonstrate this use to the Trademark Office. Most applicants who file their own applications get this wrong. Your business license, your business cards and similar items are not evidence of use in interstate commerce. A trademark attorney can help you identify the proper evidence of use.
4. Drafting identification of goods
Certainly the Acceptable Identification of Goods and Services Manual on the USPTO website can be instructive, but what if your contemplated goods and/or services is not there? Your identification of goods and/or services is the one of the most important parts of your application – be sure to discuss this with an experience trademark practitioner. Most pro se litigants receive office actions from the Trademark Office asking for further specificity and/or a revision to the identification. Make sure you understand this portion of your application as it is the scope of the protection you will have for your trademark for years to come.
5. Miscellaneous statements
Do not fill in any other portion of the application that you do not understand. Please consult a qualified trademark attorney before filling in any of these boxes, as doing so may restrict and/or effect your trademark rights.
Remember, trademark law is extremely detail oriented. Practitioners focus in this area for a reason and those who make their living in this area of law are best equipped to help you build your brand and your business. If you need help filing a trademark application, please feel free to contact us.
Stacey C. Kalamaras is the founding partner of Kalamaras Law Office, LLC. She has extensive intellectual property experience with a particular focus on trademark prosecution and enforcement. She has protected some the world’s largest brands in more than 150 countries and specializes in helping small and medium sized businesses grow and protect their brands. Contact her at firstname.lastname@example.org.
Stacey is also the founder and lead instructor of Trademarkabilities®, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be confident and effective practitioners before the USPTO. To learn more, please visit https://www.trademarkabilities.com/.