Counseling Clients About the Perils and Pitfalls of Do-It-Yourself IP – Trademarks

A trademark may be almost anything that is used to identify a product or service. Trademarks can include words, logos, shapes, colors, and tradeonlinemarket of the same. Trademarks can represent one of the most important assets of many businesses. Having a good trademark can distinguish the business’ products and/or services from those provided by competitors. Accordingly, it can be critical to the success of a business to secure trademark protection.

Despite the value that good trademark protection can provide, probably even more so than with patents, clients may hold the belief that they can file a trademark application or maintain a registered trademark without the assistance of an attorney. It is understandable that clients are reluctant to incur the expense of hiring an attorney to handle trademark matters when the forms seem easy to fill out and, of course, doing the filing without an attorney seemingly can save money. However, the pitfalls of cutting corners when it comes to securing and/or maintaining trademark protection can be myriad.

A. Failure to Adequately Select an Enforceable Trademark

When a client attempts to file his/her trademark without the assistance of an attorney, issues sometimes arise because the client may not have done the due diligence to reasonably confirm that the trademark is a good one (i.e., capable of being protected and enforceable). An enforceable trademark is one that allows the owner of the mark to stop others from using the same or similar marks in connection with similar products or services associated with the enforceable trademark.

A trademark is more likely to be enforceable when it is distinctive and actually services to distinguish the goods or services associated with the mark from those goods or services provided by others. One of the more common problems when clients attempt do-it-yourself trademark protection is selecting a descriptive trademark to be protected. A descriptive trademark is defined as one that describes a quality of characteristic of the good or services to be associated with the mark, and these are the marks that are usually the hardest ones to enforce. Yet, a client who is unfamiliar with the trademark laws may believe that his/her selected trademark is good because it describes the goods and/or services to be associated with the mark. Similarly, the client may believe that the trademark is good because a potential consumer would know what is being sold merely by being presented with the mark.

When a client selects a descriptive trademark to be protected, the client runs the risk that the U.S. Patent and Trademark Office may reject that mark for being too descriptive, causing the client to not be able to obtain a registration at all. The client may attempt to go at it alone until the U.S. Patent and Trademark Office issues the rejection. At this point in time, the attorney may have limited options to address the rejection. The attorney may recommend that the client amend to place the trademark on the Supplemental Register until such time as the trademark owner can show long and extensive use, making the mark distinctive. This can be a strategy to address the rejection, but the client must then be prepared to make the investment of time and money to make the mark worthwhile to maintain.

Another potential pitfall of failing to adequately select an enforceable trademark at the outset is that when the U.S. Patent and Trademark Office performs a search during examination, they may identify an existing mark that presents a potential bar to registration because of likelihood of confusion. In such a scenario, the mark may not be protectable, and in fact, may be infringing, thereby causing the client to have to rebrand a business or product. This may cost the client much more money than would have been paid to a trademark attorney.

The best way to identify such problems is to carry out proper searches prior to filing. These searches may determine the availability of the mark for use and registration with respect to one or more classes of goods and services. Conducting a search may disclose marks that are identical or similar to the proposed mark. If the proposed mark is identical or sufficiently similar to an existing mark, which is used for goods and/or services that are the same or similar to the proposed goods and services, there could be a risk of likelihood of confusion between these marks. Such likelihood of confusion could cause the denial of a registration of the proposed mark or expose the client to liability for trademark infringement if it uses the proposed mark. Unfortunately there are no bright-line rules as to whether there is a risk of likelihood of confusion or the degree of such risk. Instead, it is a question of fact depending on an assessment of each individual mark as well as an assessment of the degree of similarity of the relevant goods and/or services. Having an attorney assist with such an evaluation prior to filing a trademark application is perhaps one of the most effective financial investments a client can make, as it can potentially help to avoid major legal and other business costs down the road, particularly if it helps to avoid a rebranding campaign.

B. Failure to Meet U.S. Patent and Trademark Office Requirements

Another pitfall that may arise with do-it-yourself trademark applications is when a client does not fully appreciate the U.S. Patent and Trademark Office requirements for trademark applications. Some of the most common mistakes arise with respect to identifying the proper owner of the trademark, knowing when to file an “intent-to-use” application as opposed to a use-based application, and accurately describing the goods and services associated with the mark.

1. Ownership Issues

The trademark application must correctly state who owns the trademark rights. If a company is identified as the owner of the trademark, the company should be legally formed and registered; otherwise, there may be an argument that the trademark registration was issued to a non-existent party, making the trademark unenforceable.

2. Intent-to-Use versus Use-Based Filing

If a client is not yet using the trademark in connection with goods or services in the marketplace (i.e., interstate commerce) but still wants to proceed with protecting the trademark, the client should file an intent-to-use (ITU) application. Upon allowance, an ITU application may protect the mark while giving the owner time to get the mark associated with the goods and services and out into the marketplace. However, in a do-it-yourself trademark application context, the client may not appreciate the difference in the types of filings. In such a scenario, the client may need to re-file the trademark application, so as to make it an ITU application as opposed to a use-based application. At the very least, this raises the costs of securing protection, as another filing fee would need to be paid. But there also is a risk that another party may secure rights in the same or similar mark in the interim, thereby eliminating or at least reducing the protection that the client may be able to obtain.

3. Accurately Describing Goods or Services

A trademark application requires an identification of the goods or services to be associated with the trademark. The U.S. Patent and Trademark Office provides a list of pre-approved descriptions for goods and services. Trademark attorneys are trained to consult this list and identify the proper goods and services to be associated with a trademark. This is particularly important in the scenarios where the pre-approved descriptions may not entirely align with a trademark, and the attorney may rely on his/her experience with the U.S.Patent and Trademark Office to suggest descriptions that are likely to be approved. With do-it-yourself trademark applications, the most common problems arise when the client does not know to consult the pre-approved descriptions for goods and services or the client otherwise includes an improper description of the goods and services to be associated with the mark. This may lead to one or more rejections, thereby increasing the costs to obtain registration.

Another pitfall that arises with respect to preparing a description of goods and services is exaggeration of the goods and services allegedly associated with the trademark. The goods and services section of a trademark application should describe how the mark is or will be used in commerce. Applicants sometimes tend to list every potential product or service that they can think of being associated with the mark. This may be another example of applicants thinking that they are getting the most out of the filing fee paid to the U.S. Patent and Trademark Office; however, applicants engaging in this practice may be doing themselves a great disservice.

If the mark is registered for goods and services that are not actually associated with the mark, the applicant may be viewed as having committed fraud on the U.S. Patent and Trademark Office and it could lead to nullification of the trademark registration in its entirety. Trademark attorneys are trained to scrub the description of goods and services and to drop any goods/services not being associated with the mark, prior to registration to minimize the likelihood of fraud on the U.S. Patent and Trademark Office or potential unenforceability of the trademark in the future.

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