According to research by two UNC law professors, Gerhardt and McClanahan, inexperienced trademark applicants who filed for trademark registration without a lawyer had their trademarks published only 57 percent of the time. Experienced trademark lawyers, by contrast, successfully published their clients’ trademarks 83 percent of the time.
Those numbers are not surprising to anyone who has prosecuted trademark applications before the USPTO. The trademark registration process is more complex than it appears. Filing the TEAS form is the easy part. Choosing the right goods and services identification, conducting a meaningful clearance search, and responding to office actions from a USPTO examining attorney are the steps where unrepresented applicants consistently fail.
The most common reason trademark applications fail without attorney representation is the likelihood-of-confusion refusal. Under 15 U.S.C. § 1052(d), the USPTO will refuse registration of a mark that is likely to be confused with a previously registered mark. An experienced trademark attorney conducts a comprehensive clearance search before filing that identifies these conflicts in advance. An unrepresented applicant who skips this step may invest the USPTO filing fee and months of waiting only to receive a final refusal.
The second most common failure point is the identification of goods and services. The TEAS application requires the applicant to describe, in precise terms, the goods or services in connection with which the mark is used or intended to be used. The USPTO uses a manual of acceptable identifications, and deviations from that manual draw office actions. Getting the identification right on the first filing requires familiarity with the manual and with the examining attorney’s standards.
Third, many applicants fail to respond to office actions correctly or at all. When the examining attorney issues a refusal, the applicant has six months to respond. The response must address each ground for refusal with legal arguments, evidence, or amendments. Inadequate responses, or no response at all, result in abandonment. The USPTO does not extend the response deadline, and abandoned applications must be refiled from scratch with a new filing fee.
A federal trademark registration under the Lanham Act is a valuable business asset. It establishes your right to use the mark nationwide, creates a public record of ownership that deters would-be infringers, and gives you the legal tools to enforce your rights. Specifically, a registered trademark provides:
A good trademark attorney does far more than fill out the TEAS form. Before filing, we conduct a comprehensive clearance search of the USPTO database, state registries, and common-law sources. We provide a written opinion assessing registrability and identifying potential conflicts. We draft the identification of goods and services to maximize protection while satisfying USPTO requirements. We file the application and monitor it through examination.
When the examining attorney issues an office action — and they do on a significant percentage of applications — we draft a responsive legal argument tailored to the specific refusal. For likelihood-of-confusion refusals, we analyze the relevant du Pont factors and marshal evidence of dissimilarity. For merely descriptive refusals, we argue acquired distinctiveness or amend the filing basis where appropriate. We pursue the application to registration and advise on post-registration maintenance obligations.
We also monitor your mark after registration. Knowing when a potentially conflicting mark is published for opposition gives you the opportunity to challenge it before it becomes a registered right. Our trademark attorneys monitor clients’ marks and advise on whether to file oppositions.
Registration is the beginning, not the end, of trademark protection. Courts and the USPTO consider whether trademark owners consistently enforce their rights when evaluating infringement claims and challenges to registration. Revision Legal helps registered trademark owners develop enforcement programs — from monitoring for unauthorized use to sending cease and desist letters to litigating in federal court or before the TTAB.
If you have already received a trademark cease and desist letter, or if you have discovered that a competitor is using a mark that is confusingly similar to yours, contact a trademark attorney today. The statute of limitations and equitable defenses like laches can limit your remedies if you delay.
If you have questions about trademark registration or enforcement, contact the trademark attorneys at Revision Legal. Call us at 855-473-8474 or complete our contact form.
Every day a business operates without a registered trademark is a day that a competitor could file for a confusingly similar mark and establish registration priority. USPTO trademark application processing takes anywhere from several months to over a year. The priority date for a trademark application runs from the filing date — not the date of registration. Filing now establishes your priority position even while the application is being examined.
The cost of trademark registration — a few hundred dollars in government fees plus attorney’s fees — is a small fraction of the cost of rebranding after a competitor achieves a conflicting registration, or the cost of defending a trademark infringement lawsuit after years of investment in a brand that turns out to be unavailable. The UNC study confirms that unrepresented applicants fail at a dramatically higher rate than those with experienced counsel. Those failed applications represent wasted filing fees, months of delay, and continued exposure during the period when the business operated without protection.
Revision Legal offers flat-fee trademark registration services that include a clearance search, application preparation and filing, and response to standard office actions. Contact us today to get your brand protected.
Contact the trademark attorneys at Revision Legal with questions about trademark registration or enforcement. Call 855-473-8474 or complete our contact form.
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