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File Your Own Trademark Application


Over the last decade and one half of preparing, filing and litigating trademark registrations, I have received several trademark registrations in various states of disarray, which had been prepared and filed either by clients themselves or by non-intellectual property attorneys. Unlike with trademarks, attorneys do not need any special certification to file trademarks on behalf of clients. Just because they CAN, however, does not mean they SHOULD.

Interestingly, both self-filing clients and non-intellectual property attorneys seem to have attended the same Screwing Up Your Trademark Registrations seminar at some point in their careers, as they tend to make the same mistakes. Filing a trademark registration is not like registering a domain name. Trademark registration requires certain mistakes be avoided, the repercussions of which may not become apparent until several years down the road, often long after it is too late the remedy them. Some of the more critical, oft-repeated mistakes include: not understanding what constitutes a "Date of First Use",  describing the goods or services too narrowly, listing goods or services not provided in association with the trademark, listing the wrong international class, listing a word mark as a design mark, defining the trademark too narrowly, etc.

Granted, I am only looking at the cases handed to me AFTER someone noticed a filing error.  Based upon the cases I have seen however, non-intellectual property attorneys do not appear to screw up trademark applications significantly less often than clients who file the applications themselves. Surprisingly, it typically does not cost any more to have a trademark attorney file your trademark application, than it does to have your divorce attorney file your trademark application. Over the long run, however, going with a trademark attorney may save you a substantial amount, avoiding problems an attorney from another area of expertise might encounter.

So how do you know if your attorney has the trademark registration experience he or she professes to have? Go to the United States Patent and Trademark Office website.  Click on the heading "Trademark" from the left hand menu and from the pull-down menu search "Search TM database." On the screen that appears, select "Structured Form Search." Two boxes will appear on the left side of the screen. Type in your attorney’s first name in one box and last name in the other box. In the "Field" boxes to the right, select "Attorney of Record" from the pull down menu for each box. Finally, change the box on the far right from "OR" to "AND" and click "Select Query."

Did you get over 50 results? If not, you might want to shop around for an attorney with a little more experience. Alternatively, you might just take a stab at filing the application yourself. While filing the application yourself is not likely to significantly reduce the odds of irreparably undermining your trademark registration, screwing it up yourself will at least be significantly less expensive.


Brett Trout

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