Trademark Application Tips, and Some Ways to Avoid Pitfalls

By: Michael J Foycik Jr. 
May 12, 2013 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336

Filing a trademark application?  That may seem easy, but mistakes can be costly later, during the examination phase.  Here are a few helpful tips, and a few pitfalls to avoid.

 After a trademark application is filed, the U.S. Trademark Office conducts an examination of the application.  For example, if there is both an objection and a refusal to register the mark, then a response will be necessary to meet the objection and to overcome the refusal to register.  This happens frequently, and an experienced trademark attorney will likely know just what to do when writing the response.

 In my experience, it pays to respond to every office action.  Many issues are within the range of discretion of the trademark examining attorney, and good legal arguments in support of the trademark may well be persuasive.  Some firms charge substantial sums of money to prepare responses, and other firms might charge much less - therefore it may pay to shop around.

 A helpful tip: before filing a trademark application, find a cost effective trademark attorney.  It is wise to assume things may not always go smoothly or quickly.

 Another tip: select the best type of trademark application. There are two types: intent-to-use applications, and actual use applications.  Both cost the same to file.  The intent-to-use application can be filed long before actual use occurs, but there is a later government fee when completing the intent-to-use application.  The trade off is that completing the intent-to-use application requires a statement of use or allegation of use, together with a specimen of use and an additional government fee.  If an actual use application can be filed based on actual use in interstate commerce, then it will save money to do so.

 It pays to know what types of problems come up during the examination phase.  Some problems that may come up: the trademark examiner may raise objections due to a similar prior mark, may object to the mark based on descriptiveness or misdecriptiveness of the mark, may object to the mark as having an improper geographical reference, and may object to the listing of the goods/services.  There are other possible grounds of objection too. 

 In light of the above, another cost saving tip is this: have an experienced trademark attorney look at the mark prior to filing, just to see if there is something that jumps out.  You probably wouldn't want to spend money to file an application if it was certain to fail.  Here, too, it often pays to shop around.  Some attorneys would charge quite a bit just to look at the mark, whereas others might take an interest and provide helpful comments at little or no additional charge.  Trademark owners have reported a wide range of fees, some fees being reasonably low and some fees being unexpectedly high.

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