trademark application on your behalf. The primary reason is that an attorney is
more likely to prepare a sound application with the broadest legal rights. Unlike
copyright applications in which the breadth of your legal is decided by the
copyrighted work itself, the wording on a trademark application can determine
the breadth of your legal right.
The Trademark Office has an interest in keeping applications very narrowly
defined, restricting your trademark rights, while attorneys are trained to push
the envelope in the wording of the application in order to maximize your
trademark rights. Experienced attorneys also know how to avoid the myriad of
fatal mistakes in the selection and preparation of specimens, and other
application details.
Another good reason to hire an attorney to prepare your application is that only
an attorney can give you legal advice when there are difficulties processing
your application. If you haven't used an attorney for the registration, you will pay
by the hour for this advise. Problems and rejections are very common. If you
want to determine how frequently such legal advise may be needed, you can
scan the Trademark Office database and look at how many applications were
rejected.
Our attorneys have filed literally hundreds of trademark applications and can
prepare your application to protect your trade or service mark -- whether it be in
use or filed under an intent to use. Having a qualified attorney file your
application ensures that your mark is property entered in the correct categories
for goods and services so that you can obtain the broadest protection possible.
After the USPTO determines that the minimum filing requirements have been
met, the application is forwarded to an examining attorney. This may take a
number of months. The examining attorney reviews the application to determine
whether it complies with all applicable rules and statutes and includes all
required fees.
A complete examination includes a search for conflicting marks, and an
examination of the written application, the drawing, and any specimen. After an
application is filed, the assigned examining attorney will search the USPTO
records to determine if a conflict, i.e., a likelihood of confusion, exists between
the mark in the application and another mark that is registered or pending in the
USPTO.
To find a conflict, the marks do not have to be identical, and the goods and/or
services do not have to be the same. It may be enough that the marks are
similar and the goods and/or services related.
If a conflict exists between your mark and a registered mark, the examining
attorney will refuse registration on the ground of likelihood of confusion. If a
conflict exists between your mark and a mark in a pending application that was
filed before your application, the examining attorney will notify you of the
potential conflict. Having a qualified trademark attorney at this point in the
process is invaluable as our attorneys are very knowledgeable on the current
state of the law and your legal options.
These materials have been prepared for informational purposes only and are not legal advice. This
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relationship. Internet subscribers and online readers should not act upon this information without
seeking professional counsel. Do not send us information until you speak with one of our lawyers
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