By: Mark R. Malek
I have been taking in many clients that have started off the trademark process by filing themselves, but have now run up against some seroius issues at the Trademark Office. After looking at what the trademark owner has originally filed, and figuring out what it is going to take to fix the issues with the trademark application, it seems as though these trademark owners who attempt to file and prosecute their own trademark applications are pennywise and pound foolish. I appreciate the reasons for filing your own trademark applications, particularly in this economy. Many times, trademark owners are small companies, or individuals that are trying to minimize legal fees. Nevertheless, there is potential damage that can be caused by improperly filing your own trademark application, or relying on a one-size-fits-all service provided by non-attorneys.
Some of the folks that I have recently met that filed their own trademark applications, or that have used a non-attorney service to do so, are now up against some very tough rejections from the Trademark Office, or are having other difficulties with the trademark prosecution process. Inevitably, these clients wind up spending more money to pay an attorney to fix the application or to re-file the application, than it would have cost to hire an experienced trademark attorney to file the application for them.
An issued trademark can provide the trademark owner with significant protection for their intellectual property. Don’t believe me? Take a look at the trademark portfolio for “Coca-Cola”. The last time I checked, Coca-Cola had over 600 trademarks and trademark applications, in theUnited Statesalone. The Coca-Cola formulation is not protected by a patent, but the brand is protected by numerous trademarks. Anyone reading this that has ever had a Coca-Cola product will appreciate that they get the same exact Diet Coke if it is purchased in Florida or if it is purchased in New York. Therein lies the value of a properly protected trademark. The consumer always knows the quality and source of the product they are buying when it is identified by a Coca-Cola trademark.
Some of the most common issues that I have encountered stem from the trademark owner selecting an improper filing basis, or submitting an improper specimen, or even amending an application in a way that it should not have been amended (pursuant to some “assistance” received from the Trademark Examining Attorney). The Trademark Examining Attorneys are professionals, but you need to remember it is not their job to help you get the best rights possible, but rather it is their job to examine the application you have submitted. Just because the Trademark Examining Attorney makes a suggestion or a request does not mean that is what is best, or even preferable.
I have encountered several trademark applications filed by the trademark owner that purport to have used the mark in commerce. The requirement to use a trademark in interstate commerce means that the trademark was used on the good or service across state lines. Many trademark owners may have only used their trademark within one state, but mistakenly file an application noting that the trademark has been used in interstate commerce. During prosecution, the Trademark Examining Attorney does not check to see if the trademark was actually used in interstate commerce. Instead, the Trademark Examining Attorney checks to see if there are any conflicting trademarks in the Trademark Office records and, if not, assuming that the other trademark requirements are met, will allow the application. If the mark was not used in interstate commerce when the Trademark Examining Attorney allowed the mark, this could mean trouble for the trademark owner down the road. You may have acquired a trademark with little or no rights attached, which is a nightmare scenario.
An improperly filed application could be subject to cancellation, and is likely not enforceable. The moral of the story is that hiring an attorney to file a trademark application is not overly expensive, and is a good way to ensure that your trademark is properly filed and prosecuted. The last thing you want is to have saved a few hundred dollars representing yourself only to learn that the trademark you acquired can be cancelled or not enforced. The investment in business cards, letterhead, advertisements, signs, brochures and more could all be lost, so filing a trademark application yourself and saving a few hundred dollars may well cost you thousands of dollars down the road, which is not a good trade by any measure.