It’s not required that a trademark registration application be filed by a lawyer; however, there are hidden pitfalls to registering your trademark on your own. The two largest obstacles to filing a trademark registration without a lawyer are: 1) evaluating the likelihood of a trademark’s registerability, which includes considering automatic notices that may be sent to other trademark owners when a new trademark application is filed and 2) an almost unavoidable ‘office action response’ which is a much more detailed legal document that the USPTO often requires after reviewing a trademark application.
First, let’s look at evaluating the likelihood of a trademark’s registerability, which includes considering automatic notices that may be sent to other USPTO trademark owners when a new trademark application is filed. Behind the scenes of a new trademark application is a massive registry of preexisting trademarks. And as you might guess, the owners of registered trademarks are territorial over their marks and can aggressively attack and oppose a newly filed for trademark that encroaches on, or is too similar, to one of their marks. For example, Apple is a famous, registered trademark that includes a stylized apple graphic. Undoubtedly, Apple has automatic trademark notices in place to notify it as soon as a new trademark application is filed that includes an apple graphic. This means that Apple is notified and put on defensive (possibly roaring and with guns blazing) to legally challenge any new trademark applications that is similar to its mark.
Secondly, it is almost standard practice for the USPTO to request a more detailed legal document (called an ‘office action response’) in support of a filed trademark application. This document is more involved and requires case law references and if this document isn’t filed timely or accurately then the application is denied and the initial filing fee is lost.
Taking a realistic look at filing a trademark application without a lawyer is important. Although don’t forget that the trademark system is USE based… which means that common law trademark rights begin to be established as soon as a trademark starts being used on goods and services in commerce.
BY: Vanessa Kaster, Esq., LL.M.
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