TOP THREE TIPS IN COUNSELING A CLIENT FILING A U.S. TRADEMARK APPLICATION
SELECTION OF A TRADEMARK OR SERVICE MARKThe first step in the trademark application process, after a client selects a qualified and experienced trademark attorney to counsel them through each step of the process, is counseling a client on the selection of a mark that is not only available available, but also a strong trademark that properly reflects the intended impression the client wants consumers to have of their trademark. In addition, an attorney should counsel their client to choose a trademark that will not result in competitors taking issue with the registration or use of the mark. The trademark registration process is long, and a company or individual cannot put their branding efforts on hold until a mark is finally registered sometimes 8-12 months after filing the application. As much as some clients want their mark to have a strong connotation to those goods and services they offer, these marks also tend to be the type that can be viewed as descriptive and even generic, and thus not protectable.
CLEAR THE TRADEMARK FOR REGISTRATIONThis step requires not only a cursory review of the USPTO database for identical trademarks in the exact same product or service industry. It requires comprehensive and current research into potential conflicts at a federal, state, and common law level for marks that are similar in look, feel, and commercial impression, a research effort that should also focus on phonetically similar marks, foreign translations, domain names, and even trade names. Even when a mark appears clear of conflicts, I advise clients to be cautious of well funded companies with valuable trademarks (some thought to be famous) that may be the basis for enforcement efforts. These enforcement efforts may at times be lacking strong support of trademark law and may appear to be instances of over-policing but nonetheless these efforts may be difficult to overcome based on the resources and legal budgets these companies can use to prevent the registration and use of a mark over an extended period of time.
FILE THE TRADEMARK PROPERLY AND WITHOUT ERRORSThere is a reason clients choose experienced attorneys as opposed to themselves or a filing service. We have the knowledge and experience to ask those questions not readily apparent and know not to just accept the information provided by the client. You need to ensure the mark is owned by a proper legal entity in existence and for liability reasons, it is always advisable for an entity rather than individual to be the owner. You need to counsel the client on the current status of use for not just some of the goods or services listed, but for all included in the application. Recent case law on issues of bona fide intent and fraud have shown the pitfalls of applying for those goods or services not in use for an in use application or that the client does not have a bona fide intent to use for an intent to use application. The USPTO are slow to identify new goods and services, so it is important to counsel a client on how the USPTO has recently identified similar goods and services.