Today's Date: August 23, 2014 Search | Home | Contact | Services | Patent Attorney | Patent Search | Provisional Patent Application | Patent Application | Software Patent | Confidentiality Agreements

The Perils of Being Your Own Trademark Attorney


Written by: Mark Malek
Zies, Widerman & Malek
Posted: May 16, 2012 @ 6:00 am

Tell A Friend!

Trademark owners who attempt to file and prosecute their own trademark applications are really being 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 in their infancy, or individuals that are trying to minimize legal fees while attempting to obtain valuable trademark protection. Nevertheless, there is significant long term damage that can be caused by filing your own trademark, or relying on a one-size-fits-all service provided by non-attorneys.

It seems I have a constant of clients that have filed their own trademark applications, and some that have used non-attorney services. These clients 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.

Trademark owners may believe that filing and prosecuting a trademark application it is a simple process. Admittedly, the filing of a trademark application is much more straight forward than the filing of a patent application. Further, 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”. Coca-Cola has hundreds of trademarks and trademark applications in the United States alone. 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 Minnesota or if it is purchased in Rhode Island (I chose the drink and these states at random by the way). Therein lies the value of a properly protected trademark. The consumer always knows the quality of the product they are buying when it is identified by a Coca-Cola trademark.

Trademarks are so important because they identify the source of a particular good or service. The trademark owner, if they do it right, has associated their good or service with a particular level of quality that they work hard to maintain. If the trademark owner does not protect their trademark, they may open themselves up to the danger of an inferior quality good or service being distributed under the same or similar name. Such acts cause consumer confusion in the marketplace. Therefore, it is not only important for the trademark owner to seek protection for their trademarks, but it is exceedingly important for the trademark owner to file the application properly. The trademark owner certainly should not rely on the Trademark Examining Attorney to help them through this process.

The safest bet is to hire an attorney familiar with trademark prosecution to handle protecting your trademark assets. Of course, this means paying a legal fee, but I believe the legal fees involved in having an experienced attorney prepare, file and prosecute a trademark application pale in comparison to the cost of not having a properly protected trademark. As noted above, this post is prompted by the recent increase I have encountered of fixing, or sometimes re-filing, trademark applications that have either been filed by the trademark owners themselves, by attorneys that do not specialize in trademark prosecution, or using the “assistance” of some websites that purport to file trademark applications for the trademark owner, without providing legal advice.

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 right possible, but rather it is their job to examine the application you have submitted.  Just because the Trademark Examining Attorney at the Trademark Office makes a suggestion or a request does not mean that is what is best, or even preferable. The rules and regulations governing trademark applications are very specific, but some of the language in the rules is not easily understood by those without training. For example, a trademark is not eligible for registration on the Principal Register if it has not been used in interstate commerce.

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 mark in interstate commerce means that the mark 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 mark has been used in interstate commerce.

During prosecution, the Trademark Examining Attorney does not check to see if the mark was actually used in interstate commerce. Instead, the Trademark Examining Attorney checks to see if there are any conflicting marks 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 to be 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 is cancelled or not enforceable. 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.

About the Author

Mark Malek is the managing partner in the firm Zies, Widerman & Malek, and head of the firm's intellectual property practice group. He is a registered patent attorney and admitted to practice before the United States Patent and Trademark Office, as well as member of the Florida Bar. Mark represents clients before the United States Patent and Trademark Office and counsels inventors and businesses on various intellectual property strategies. He routinely handles patent applications relating to mechanical and electronic devices, as well as computer systems and software.


6 comments
Leave a comment »

  1. Mark,

    Sage advice. I’ve had a couple of clients try filing their own trademark applications and find the prosecution process daunting. Also, most clients don’t understand that they can file an “intent to use” application if you don’t have clear support for “use in commerce.” And understanding what you mark should be described as and what goods/services should be attached to it are not for neophytes.

  2. Nothing teaches them the value of what we do better than finding out how easy it is to screw up by doing it pro se. And, fortunately, for most cases, the errors they make are not irreversible.

  3. I guess what kills me the most is the amount that it normally takes to fix everything. 9 times out of 10, it would have been cheaper just to let us get it right the first time out. Thanks for reading all!

  4. This advice is even more relevant when seeking international trademark protection. I had a client (in Australia) who was determined that he was going to file in the US first, because that is the most important market, even though he had no idea when he might commence use in commerce in the States, and only a sketchy business plan for this international expansion.

    There are a few filing strategies he could use to secure his rights. But filing an intent-to-use application in the US, and not having a registration in his home market (from which he would be exporting trademarked products), is pretty much the worst way he could have gone. Aside from not thinking about trademark protection at all, of course!

    The problem with the trademark system, compared with patents, is that it appears simple. Deceptively simple!

  5. By protecting a new idea for a process or product, patents make it possible for individuals and businesses to protect their work and investments. Without this kind of protection, it would not be worthwhile for people to invest large amounts of money in new inventions since they would not be able to prevent their competitors from immediately making use of their invention, without having had to put in the same time, money and hard work.

  6. Through the intelligent use of information, we can shape and refactor better policy.