Properly cared for, your trademark can develop into the most valuable asset you own. At a gathering of staff from several Coca-Cola bottling plants, a senior executive reportedly declared that “the company could lose all its plants, lose all its staff, lose its access to the sources of its raw materials, lose its capital and its accounts, but as long as it had [its trademark], it would be possible to walk into a bank and receive sufficient credit to replace the entire global infrastructure.”¹ Unlike other forms of intellectual property like a patent or a copyright, your trademark can live forever. Given its potential value and import, even fledgling companies should recognize that their trademarks are sacrosanct.

Automated Trademark Registration Services: To Good To Be True

Too often, clients come to us with trademark applications filed through automated services like trademarkengine.com or similar services. The price for such services looks too good to be true because it is. Once a federal trademark application is filed, there are many significant limitations on how it can be amended. A trademark attorney with years of experience dealing with the Trademark Office can help you identify problems that you did not know existed. In most cases, it is important to identify these issues as soon as possible. Being forced to change your brand after a year in business is often a death sentence to a young company.

Preventative Medicine: The Office is Open

Like medical work, a little bit of preventative legal advice is much more cost effective than triaging an early mistake. If you have used a DIY trademark filing website, you may be facing an Office Action from the Trademark Office that illustrates this point. Office Actions often read as though there is no hope for registration. In most cases, however, applicants have options. We specialize in navigating the thorny procedural issues that arise when dealing with the Trademark Office. We also litigate trademark disputes in federal courts across the country. Our expertise gives us a unique perspective that allows us to spot potential issues that attorneys who focus only on trademark applications or trademark litigation would miss.

Your trademark is your reputation. We want to help you protect it.

¹Rosemary J. Coombe, The Cultural Life of Intellectual Properties: Authorship, Appropriation, and the Law 56 (Duke University Press 1998).

What Can Go Wrong With a Trademark Application—and Why It Matters

The USPTO receives hundreds of thousands of trademark applications each year. A significant portion receive Office Actions—written refusals that require substantive responses. The most common grounds for refusal include likelihood of confusion with an existing registered mark under Section 2(d) of the Lanham Act, and mere descriptiveness under Section 2(e)(1). Both require legal arguments that automated filing services are entirely unequipped to make. When you file through an online service and receive an Office Action, you are typically on your own—or paying additional fees that eliminate any cost savings the automated service provided.

The Identification of Goods and Services Problem

One of the most consequential decisions in a trademark application is how to describe the goods and services associated with the mark. The USPTO’s Trademark ID Manual contains thousands of pre-approved descriptions, but choosing the right ones—and the right international classes—requires strategic judgment. An overly narrow identification limits the scope of your protection. An overly broad identification may be refused or require specimens you cannot produce. Automated services typically offer drop-down menu selections that may not capture the full scope of your business or may select inappropriate class designations that lead to avoidable rejections.

This matters because your registration only protects the specific goods and services identified. A competitor selling a related but differently classified product may be able to register a confusingly similar mark simply because your identification was drafted too narrowly. Getting the identification right on the initial application is far cheaper than filing additional applications later.

Responding to Office Actions: Where Inexperience Is Most Costly

When the USPTO refuses a trademark application, the applicant has three months to respond (extendable to six months for a fee). A substantive Office Action refusal requires a legal brief arguing why the mark should be registered. These arguments draw on case law, dictionary definitions, industry evidence, and prosecution history. Automated services typically do not draft responses to Office Actions. You either pay them an additional fee for a response that may be inadequate, or you scramble to find an attorney to fix a problem that could have been avoided.

If the initial response is insufficient, the examiner issues a Final Office Action. At that point, the applicant’s options narrow: a Request for Reconsideration, an appeal to the Trademark Trial and Appeal Board (TTAB), or abandonment. TTAB appeals are formal legal proceedings. The cost of getting to that stage through an automated service filing often vastly exceeds what a proper attorney-supervised application would have cost from the start.

Specimen Requirements and Use-Based Applications

For a use-based trademark application, you must submit a specimen showing the mark as actually used in commerce. The specimen requirements differ depending on whether the mark is used for goods (labels, tags, displays) or services (website screenshots, advertising). Automated services often accept specimens without reviewing whether they actually meet USPTO requirements, leading to a common Office Action requiring a substitute specimen. This delays registration and, in some cases, can result in abandonment if the substitute specimen is also deficient.

The Long-Term Value of Getting Registration Right

A properly registered trademark, maintained through timely maintenance filings, can last indefinitely. After five years of continuous use following registration, you can file a Declaration of Incontestability under 15 U.S.C. § 1065, which eliminates many defenses a challenger could otherwise raise. An incontestable registration is a significantly more powerful legal asset than a standard registration—but incontestability requires a clean initial registration that correctly identifies the goods and services and was properly supported by specimens.

Your trademark is a business asset that should grow in value over time. The decisions made at the application stage determine the strength and scope of protection you receive for the life of the mark. Contact the trademark attorneys at Revision Legal before you file—not after. Get in touch today.

Maintaining Your Trademark After Registration: Ongoing Obligations

Obtaining a trademark registration is not the end of the process—it is the beginning of a maintenance obligation that runs for the life of the mark. The USPTO requires periodic filings to keep a registration active. Between the fifth and sixth years after registration, you must file a Section 8 Declaration of Continued Use (or Excusable Non-Use) along with a specimen showing current use. At the ten-year renewal mark, a combined Section 8 and Section 9 Renewal Application is required, and every ten years thereafter.

Missing these maintenance deadlines results in cancellation of your registration—a loss that can be difficult or impossible to cure. A cancelled registration must be re-applied for from scratch, potentially losing your priority date and any incontestability status you had acquired.

Automated trademark services typically do not provide maintenance docketing or remind you of these deadlines. An attorney-client relationship with a trademark firm ensures that your maintenance calendar is tracked and filings are made on time. Given that your trademark may ultimately be one of your business’s most valuable assets, keeping your registration in force should be treated as a non-negotiable business priority. Contact Revision Legal to ensure your trademark portfolio stays current. Get in touch today.