Basic Facts: How Do I Get Help With My Application?

Part 5 of Basic Facts about Trademarks Series

Published on Apr 27, 2017

This video explains what the Trademark Office does and does not do. You’ll learn whether you need to hire an attorney to help you register your mark or whether you can do it on your own. By the end of the video, you’ll understand what kind of assistance is available to you during the application process, as well as factors to consider when deciding whether to hire an attorney to represent you.

Basic Facts about Trademarks Series

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Basic Facts About Trademarks:
How Do I Get Help with My Application

Hi there and welcome to the Trademark Information Network's Basic Facts Breakdown. I'm Mark Trademan.

Applicants often ask: "Do I need a lawyer? Or can I register a trademark on my own? How do I get help if I can't afford a lawyer?" They're also curious about what the USPTO actually does and does not do. Over the next few minutes, we'll talk about what the USPTO does, what it doesn't do, and some factors to think about when deciding whether to hire a trademark attorney to represent you. Ready? Let's get started...

First, the basics. What does the Trademark Office do? It reviews trademark applications and determines whether the applied-for marks meet the requirements for national registration. So in simplest terms, it registers trademarks. The Office says "Yes" or "No" as to whether you can use the "R in the circle" symbol after your trademark, the indication that your mark has been registered with the USPTO.

Although the Office can answer general questions about the application process, the Office cannot provide legal advice. For legal advice, you need to hire a private practice attorney who specializes in trademark law. More about that later...

Lots of information about the trademark process, including the applicable rules and procedures, is available in the Trademarks section of the USPTO's website. Make sure you familiarize yourself with those materials.

For general questions about the trademark process, you can also contact the Trademark Assistance Center, usually referred to as "TAC," where they will provide you with as much general information as they can. They may also refer you to the materials on the website for further information. TAC can be emailed at "TrademarkAssistanceCenter@USPTO.GOV" or called directly at 1-800-786-9199.

Now, what does the Office not do. The Office does not decide whether you have the right to use a mark. Thats different from the right to register a mark. In the United States, no law requires that you federally register your mark in order to have rights in it. And, even if the Office refuses to register your mark, you may continue to use your mark and the TM or SM symbol that indicates you have adopted the mark as your trademark or service mark. Doing so, however (relying only on your use-based common-law rights), means that you may miss out on nationwide protection for your mark.

In addition, the Office does not conduct trademark clearance searches for the public. If you want to see if anyone is in line ahead of you with a mark that conflicts with your mark, you need to conduct your own search of the USPTO's database. Or hire an attorney to search for you. The only time the Office searches a mark in the USPTO database is after you have filed your application as part of the process of examining your application.

The Office also does not answer questions about whether a particular mark or type of mark is eligible for federal registration before you file. Answering those questions requires a complete legal review of your application and your application filing fee covers the cost of that review. Therefore, the Office only lets you know whether your mark can be registered after you have filed an application and paid the non-refundable filing fee.

The Office does not comment on the validity of registered marks. That is, the Office will not discuss whether a particular application should or should not have registered.

Or offer legal advice or opinions about common law trademark rights for marks in use but not registered with the Office. The same is true for state trademark registrations and legal actions based on trademark infringement claims.

The Office also does not assist you with recordation of your mark with U.S. Customs and Border Protection, which is a step that may help prevent the importation of counterfeit goods.

And, most importantly, the Office does not enforce your trademark rights. It is your legal responsibility to police your trademark and to protect it from infringement. Only you may bring legal action against others infringing your mark.

That means you have a lot of responsibility. From coming up with your own mark to doing a pre-filing search for conflicting marks to completing the application process to maintaining and protecting your mark after registration, there are a lot of things to do to register a mark and keep it alive. For that reason, most applicants hire a private trademark attorney to help them.

Filing a trademark application at the USPTO starts a legal proceeding that may be complex and requires you to comply with all of the requirements of the trademark statute and rules within strict deadlines.

It's not as easy as applying for a driver's license, but certainly not as hard as filing a really intricate tax return... While skiing in the Alps... During an avalanche...

A private trademark attorney, though, can help you before, during, and after the trademark application process. That is, an attorney will often shorten the overall registration process, help you avoid pitfalls along the way, increase your likelihood of obtaining a registration, and help you police and enforce the trademark registration that may issue from your application.

For example, an attorney could save you from future costly legal problems by conducting a comprehensive trademark search before filing. This is known as a "clearance search" and includes searching federal and state trademark registration databases for potentially conflicting marks. It also involves a search for common-law unregistered trademarks by searching the Internet for websites and stories involving similar marks being used for goods and services related to yours.

Comprehensive clearance searches are important because other trademark owners may have superior legal rights in trademarks similar to yours even though they are not federally registered. Therefore, those unregistered trademarks will not appear in the USPTO's Trademark Electronic Search System database, but could still ultimately prevent you from being able to use your mark, even if the USPTO registers your mark.

In addition, trademark lawyers can help you navigate the application process to provide optimal protection of your trademark rights, by, for example, advising you about what types of marks receive the most protection, accurately identifying and classifying your goods and services, and preparing responses to any refusals to register that an examining attorney may issue.

An attorney can also assist you if your mark is involved in a legal proceeding before the Trademark Trial and Appeal Board, or "TTAB."

The TTAB is like a court (with a panel of judges) and handles cases in which applicants have appealed the Office's refusal to register their marks. The issues become very complex at this point and a private attorney is highly recommended.

And, after registration, a private attorney can help make sure that all required maintenance documents are timely filed years later, so you can keep your registration alive for as long as you use your mark.

An attorney can also help you understand the scope of your trademarks rights and advise you on the best way to police and enforce those rights, including what to do if other trademark owners allege that you are infringing their marks. Remember, enforcement of trademark rights is your responsibility, not that of the USPTO.

If you decide to hire an attorney, make sure to find somebody who specializes in trademark law. Don't just respond to the first solicitation you receive and don't be confused by "trademark registration" companies that you find online. Only an attorney should assist in preparing a trademark application.

If you consider engaging a trademark filing company, be sure that a lawyer from the company will handle your application, and any necessary follow up, or else you may experience problems with your trademark application. For example, most applicants receive a USPTO Office action requiring a legal response. Because some trademark filing companies do not include such responses in their initial coverage and pricing, be certain you clearly define and understand what the filing company lawyer will handle.

Along those same lines, make sure the attorney you hire is licensed in the United States. While attorneys based in foreign countries may file your application, by law they are not permitted to communicate with the Office on your behalf or file responses to Office Actions, except in very limited circumstances. So, it makes sense to hire a trademark attorney licensed in the USA.

For comprehensive legal help, consult your local telephone listings, the Internet, or the attorney referral service of your local or state bar association. Hiring an attorney is an investment, so make sure you pick a good one. The USPTO cannot help you choose an attorney.

And remember, although attorneys generally charge a fee for their services, free and reduced-price options may be available for individuals and small businesses that meet financial eligibility requirements.

For example, bar associations often have "pro bono" divisions that provide free legal services to those who can't otherwise afford them and those services may include trademark services.

In addition, the USPTO supports a Law School Clinic program through which law students, under the guidance of a qualified faculty member, can assist you in the prosecution of your trademark.

To learn more about the program, go to USPTO.GOV and search for the term "Law School Clinic." The website has a list of participating schools, Frequently Asked Questions, and contact information about how to become a client.

Free and low cost business counseling, workshops, and mentoring are also available through the SCORE program, which is supported by the Small Business Administration. A SCORE volunteer may be able to help you with your trademark questions. Visit SCORE.ORG for more information.

Additional resources about trademarks are available nationwide through Patent and Trademark Resource Centers or PTRCs. PTRCs are libraries that the USPTO has designated to receive and house copies of patent and trademark materials and to make patent and trademark information freely available to the public. You can find a PTRC near you by visiting the PTRC page on USPTO.GOV.

The decision of whether to hire an attorney (or engage the services of the USPTO Law School Clinic certification program) is up to you. It all depends on your comfort level in dealing with legal issues, your knowledge of trademark law, and whether you have the time and energy to tackle the things that you need to do before, during, and after the registration process.

Some applicants do perfectly well without hiring an attorney; others are thankful they did. The choice is really up to you and your business needs.

Thanks for watching this Basic Facts Breakdown and we hope you learned a little more about what the USPTO does, what it doesn't do, and what factors you might want to consider in hiring an attorney to represent you before the USPTO.

As always, for more information about trademarks, please explore the Trademarks section of the USPTO.GOV website. Along with other trademark related content, there is a link to the downloadable "Basic Facts About Trademarks" booklet, as well as links to the other Basic Facts Breakdown videos.

See you next time. I'm Mark Trademan, Trademark Information Network.