Trademark Application Tips, and Some Ways to Avoid Pitfalls

By: Michael J Foycik Jr.
July 4, 2019
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.

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