Filing a Trademark application: Do I need an attorney for that?

Attorneys: we’re a pretty good punchline for bad jokes (and sometimes even pretty good jokes). But hey, that’s not all we’re good for! Drafting trademark applications, and defending preliminary refusals, oppositions and cancellations is a big part of our practice at Rogers Collective. And while a license to practice law isn’t required to file a trademark application (anyone can technically do it), it really, really helps. And, it can save you money in the long run.

The trademark application looks fairly straightforward, but, in practice, it isn’t. The truth is that a large percentage of trademark applications that are filed by business owners, without the help of an attorney, wind up being abandoned. What usually happens is that a business owner tries to file the application themselves, things get complicated, and they give up. In fact, about half of the companies for whom we have secured trademarks attempted to do it themselves at first, but faced obstacles along the way, so they wound up hiring us to do it.
What are some of the challenges in registering your trademark?
Trademark Search
Before we even get to the actual application, there is one crucial service that lawyers can provide in the trademark registration process. That service is a comprehensive trademark search. Comprehensive trademark searches are an important first step in the process (preceded only by coming up a solidly-trademarkable business or brand name (tips on that here.) If you attempt to trademark a name without first doing a search to find out if there is an identical or similar name already registered, your application can be denied and you’ll be out your application fee (those are never returned), which is sad, plus you’ll be without a trademark. (Double sad). While you can search in the USPTO’s TESS system yourself, the system does not include non-federally registered marks. Meaning that, you won’t get a clear picture of what you’re up against. Experienced trademark attorneys (like yours truly) often use more advanced software that facilitate more comprehensive searches.
The Application
There are a few tricky bits to the trademark registration process, including the application itself. The trickiest part of the application is probably the description. It needs to be both broad (so that it gives you maximum protection of your mark) and narrow (so that the USPTO will approve it). Striking this balance is the part that most laypeople get tripped up on. Improper descriptions are just one of the mistakes that can trigger an Office Action (basically a preliminary denial of the application). Almost 80% of the time the USPTO will issue an Office Action for some reason or another. Office Actions resemble legal briefs–they cite statutes and case law, and can look pretty intimidating. Depending on the reason for the Office Action, you may have to write a legal brief in response to defend your mark and try to get it registered. This is one of those things that you won’t want to go at alone.
The real rub is, if the description in your original application didn’t strike a good broad/narrow balance, you won’t have much to work with when it comes to making arguments and edits to eventually satisfy the Examining Attorney. Unfortunately, once you submit the application, you aren’t allowed to add anything to the description. You can take away, but you can’t add. (We told you it was tricky…)
Oppositions, Petitions to Cancel and other scary pieces of paper
If you make it through the application process unscathed (congratulations!) there are still some challenges that can pop up. An Opposition is one of those such challenges. Oppositions are when another person/business entity (usually the owner of a similar or somehow competing mark) makes a move to prevent your mark from being registered. A Cancellation is when another person/business entity seeks to cancel your mark’s registration after it has been officially registered. Again, you can technically represent yourself in proceedings like this, but since they are a lot like actual court cases, it isn’t recommended. Don’t just take our word for it, the USPTO agrees.
Deadlines, Monitoring and General annoyingness
In addition to the searching, the precarious application, and the opposition/cancellation business, there are strict deadlines involved in the process. Monitoring your mark after registration, and making sure its use is conducive to continued trademark registration are also key components to the entire process. These are both things that experienced trademark attorneys can assist with and advise on.
As a busy entrepreneur, your time is better spent doing the stuff that you do best, which is likely not fussing with all of this application craziness. So you might be better off leaving that stuff to and experienced lawyer (applications and other legal craziness is what we do best!).

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