1 00:00:14,660 --> 00:00:23,560 [Music] 2 00:00:26,519 --> 00:00:30,730 Hi there and welcome to the Trademark Information Network's Basic Facts Breakdown. 3 00:00:30,730 --> 00:00:32,689 I'm Mark Trademan. 4 00:00:32,689 --> 00:00:35,100 Applicants often ask: "Do I need a lawyer? 5 00:00:35,100 --> 00:00:37,420 Or can I register a trademark on my own? 6 00:00:37,420 --> 00:00:40,120 How do I get help if I can't afford a lawyer?" 7 00:00:40,120 --> 00:00:44,960 They're also curious about what the USPTO actually does and does not do. 8 00:00:44,960 --> 00:00:49,420 Over the next few minutes, we'll talk about what the USPTO does, what it doesn't do, 9 00:00:49,580 --> 00:00:53,620 and some factors to think about when deciding whether to hire a trademark attorney 10 00:00:53,629 --> 00:00:54,629 to represent you. 11 00:00:54,629 --> 00:00:55,629 Ready? 12 00:00:55,629 --> 00:00:56,629 Let's get started... 13 00:00:56,629 --> 00:00:58,079 First, the basics. 14 00:00:58,079 --> 00:01:00,350 What does the Trademark Office do? 15 00:01:00,350 --> 00:01:04,750 It reviews trademark applications and determines whether the applied-for marks meet the requirements 16 00:01:04,750 --> 00:01:06,710 for national registration. 17 00:01:06,710 --> 00:01:10,120 So in simplest terms, it registers trademarks. 18 00:01:10,120 --> 00:01:14,549 The Office says "Yes" or "No" as to whether you can use the "R in the circle" symbol after 19 00:01:14,549 --> 00:01:19,750 your trademark, the indication that your mark has been registered with the USPTO. 20 00:01:19,750 --> 00:01:24,210 Although the Office can answer general questions about the application process, the Office 21 00:01:24,210 --> 00:01:26,320 cannot provide legal advice. 22 00:01:26,320 --> 00:01:30,639 For legal advice, you need to hire a private practice attorney who specializes in trademark 23 00:01:30,639 --> 00:01:31,639 law. 24 00:01:31,639 --> 00:01:33,759 More about that later... 25 00:01:33,759 --> 00:01:38,469 Lots of information about the trademark process, including the applicable rules and procedures, 26 00:01:38,469 --> 00:01:42,590 is available in the Trademarks section of the USPTO's website. 27 00:01:42,590 --> 00:01:45,609 Make sure you familiarize yourself with those materials. 28 00:01:45,609 --> 00:01:49,840 For general questions about the trademark process, you can also contact the Trademark 29 00:01:49,840 --> 00:01:54,119 Assistance Center, usually referred to as "TAC," where they will provide you with as 30 00:01:54,119 --> 00:01:56,549 much general information as they can. 31 00:01:56,549 --> 00:02:00,869 They may also refer you to the materials on the website for further information. 32 00:02:00,869 --> 00:02:09,560 TAC can be emailed at "TrademarkAssistanceCenter@USPTO.GOV" or called directly at 1-800-786-9199. 33 00:02:09,560 --> 00:02:14,849 Now, what does the Office not do. 34 00:02:14,849 --> 00:02:18,240 The Office does not decide whether you have the right to use a mark. 35 00:02:18,240 --> 00:02:22,240 That’s different from the right to register a mark. 36 00:02:22,240 --> 00:02:26,320 In the United States, no law requires that you federally register your mark in order 37 00:02:26,320 --> 00:02:27,680 to have rights in it. 38 00:02:27,680 --> 00:02:32,660 And, even if the Office refuses to register your mark, you may continue to use your mark 39 00:02:32,660 --> 00:02:37,221 and the “TM” or “SM” symbol that indicates you have adopted the mark as your trademark 40 00:02:37,221 --> 00:02:39,030 or service mark. 41 00:02:39,030 --> 00:02:44,220 Doing so, however (relying only on your use-based common-law rights), means that you may miss 42 00:02:44,220 --> 00:02:46,830 out on nationwide protection for your mark. 43 00:02:46,830 --> 00:02:52,450 In addition, the Office does not conduct trademark clearance searches for the public. 44 00:02:52,450 --> 00:02:55,970 If you want to see if anyone is in line ahead of you with a mark that conflicts with your 45 00:02:55,970 --> 00:03:00,590 mark, you need to conduct your own search of the USPTO's database. 46 00:03:00,590 --> 00:03:03,200 Or hire an attorney to search for you. 47 00:03:03,200 --> 00:03:07,720 The only time the Office searches a mark in the USPTO database is after you have filed 48 00:03:07,720 --> 00:03:12,090 your application as part of the process of examining your application. 49 00:03:12,090 --> 00:03:16,040 The Office also does not answer questions about whether a particular mark or type of 50 00:03:16,040 --> 00:03:20,340 mark is eligible for federal registration before you file. 51 00:03:20,340 --> 00:03:25,010 Answering those questions requires a complete legal review of your application and your 52 00:03:25,010 --> 00:03:28,010 application filing fee covers the cost of that review. 53 00:03:28,010 --> 00:03:32,950 Therefore, the Office only lets you know whether your mark can be registered after you have 54 00:03:32,950 --> 00:03:37,900 filed an application and paid the non-refundable filing fee. 55 00:03:37,900 --> 00:03:41,650 The Office does not comment on the validity of registered marks. 56 00:03:41,650 --> 00:03:45,840 That is, the Office will not discuss whether a particular application should or should 57 00:03:45,840 --> 00:03:47,650 not have registered. 58 00:03:47,650 --> 00:03:52,350 Or offer legal advice or opinions about common law trademark rights for marks in use but 59 00:03:52,350 --> 00:03:54,410 not registered with the Office. 60 00:03:54,410 --> 00:03:59,030 The same is true for state trademark registrations and legal actions based on trademark infringement 61 00:03:59,030 --> 00:04:00,670 claims. 62 00:04:00,670 --> 00:04:05,250 The Office also does not assist you with recordation of your mark with U.S. Customs and Border 63 00:04:05,250 --> 00:04:09,610 Protection, which is a step that may help prevent the importation of counterfeit goods. 64 00:04:09,610 --> 00:04:13,890 And, most importantly, the Office does not enforce your trademark rights. 65 00:04:13,890 --> 00:04:19,780 It is your legal responsibility to police your trademark and to protect it from infringement. 66 00:04:19,780 --> 00:04:22,750 Only you may bring legal action against others infringing your mark. 67 00:04:22,750 --> 00:04:26,100 That means you have a lot of responsibility. 68 00:04:26,100 --> 00:04:30,319 From coming up with your own mark to doing a pre-filing search for conflicting marks 69 00:04:30,319 --> 00:04:35,080 to completing the application process to maintaining and protecting your mark after registration, 70 00:04:35,080 --> 00:04:39,580 there are a lot of things to do to register a mark and keep it alive. 71 00:04:39,580 --> 00:04:44,460 For that reason, most applicants hire a private trademark attorney to help them. 72 00:04:44,460 --> 00:04:49,219 Filing a trademark application at the USPTO starts a legal proceeding that may be complex 73 00:04:49,219 --> 00:04:53,030 and requires you to comply with all of the requirements of the trademark statute and 74 00:04:53,030 --> 00:04:55,850 rules within strict deadlines. 75 00:04:55,850 --> 00:05:00,080 It's not as easy as applying for a driver's license, but certainly not as hard as filing 76 00:05:00,080 --> 00:05:02,039 a really intricate tax return... 77 00:05:02,039 --> 00:05:04,180 While skiing in the Alps... 78 00:05:04,180 --> 00:05:05,749 During an avalanche... 79 00:05:05,749 --> 00:05:10,590 A private trademark attorney, though, can help you before, during, and after the trademark 80 00:05:10,590 --> 00:05:11,930 application process. 81 00:05:11,930 --> 00:05:16,879 That is, an attorney will often shorten the overall registration process, help you avoid 82 00:05:16,879 --> 00:05:21,690 pitfalls along the way, increase your likelihood of obtaining a registration, and help you 83 00:05:21,690 --> 00:05:26,430 police and enforce the trademark registration that may issue from your application. 84 00:05:26,430 --> 00:05:30,960 For example, an attorney could save you from future costly legal problems by conducting 85 00:05:30,960 --> 00:05:34,110 a comprehensive trademark search before filing. 86 00:05:34,110 --> 00:05:39,309 This is known as a "clearance search" and includes searching federal and state trademark 87 00:05:39,309 --> 00:05:42,680 registration databases for potentially conflicting marks. 88 00:05:42,680 --> 00:05:47,770 It also involves a search for common-law unregistered trademarks by searching the Internet for websites 89 00:05:47,770 --> 00:05:53,350 and stories involving similar marks being used for goods and services related to yours. 90 00:05:53,350 --> 00:05:57,300 Comprehensive clearance searches are important because other trademark owners may have superior 91 00:05:57,300 --> 00:06:02,379 legal rights in trademarks similar to yours even though they are not federally registered. 92 00:06:02,379 --> 00:06:07,710 Therefore, those unregistered trademarks will not appear in the USPTO's Trademark Electronic 93 00:06:07,710 --> 00:06:13,639 Search System database, but could still ultimately prevent you from being able to use your mark, 94 00:06:13,639 --> 00:06:16,690 even if the USPTO registers your mark. 95 00:06:16,690 --> 00:06:21,710 In addition, trademark lawyers can help you navigate the application process to provide 96 00:06:21,710 --> 00:06:27,059 optimal protection of your trademark rights, by, for example, advising you about what types 97 00:06:27,059 --> 00:06:31,879 of marks receive the most protection, accurately identifying and classifying your goods and 98 00:06:31,879 --> 00:06:36,819 services, and preparing responses to any refusals to register that an examining attorney may 99 00:06:36,819 --> 00:06:38,469 issue. 100 00:06:38,469 --> 00:06:41,870 An attorney can also assist you if your mark is involved in a legal proceeding before the 101 00:06:41,870 --> 00:06:46,550 Trademark Trial and Appeal Board, or "TTAB." 102 00:06:46,550 --> 00:06:51,050 The TTAB is like a court (with a panel of judges) and handles cases in which applicants 103 00:06:51,050 --> 00:06:54,659 have appealed the Office's refusal to register their marks. 104 00:06:54,659 --> 00:06:58,830 The issues become very complex at this point and a private attorney is highly recommended. 105 00:06:58,830 --> 00:07:03,319 And, after registration, a private attorney can help make sure that all required maintenance 106 00:07:03,319 --> 00:07:08,129 documents are timely filed years later, so you can keep your registration alive for as 107 00:07:08,129 --> 00:07:10,069 long as you use your mark. 108 00:07:10,069 --> 00:07:14,210 An attorney can also help you understand the scope of your trademarks rights and advise 109 00:07:14,210 --> 00:07:18,729 you on the best way to police and enforce those rights, including what to do if other 110 00:07:18,729 --> 00:07:22,560 trademark owners allege that you are infringing their marks. 111 00:07:22,560 --> 00:07:28,819 Remember, enforcement of trademark rights is your responsibility, not that of the USPTO. 112 00:07:28,819 --> 00:07:33,210 If you decide to hire an attorney, make sure to find somebody who specializes in trademark 113 00:07:33,210 --> 00:07:34,210 law. 114 00:07:34,210 --> 00:07:38,919 Don't just respond to the first solicitation you receive and don't be confused by "trademark 115 00:07:38,919 --> 00:07:42,159 registration" companies that you find online. 116 00:07:42,159 --> 00:07:46,370 Only an attorney should assist in preparing a trademark application. 117 00:07:46,370 --> 00:07:50,369 If you consider engaging a trademark filing company, be sure that a lawyer from the company 118 00:07:50,369 --> 00:07:55,610 will handle your application, and any necessary follow up, or else you may experience problems 119 00:07:55,610 --> 00:07:57,749 with your trademark application. 120 00:07:57,749 --> 00:08:05,009 For example, most applicants receive a USPTO Office action requiring a legal response. 121 00:08:05,009 --> 00:08:08,629 Because some trademark filing companies do not include such responses in their initial 122 00:08:08,629 --> 00:08:13,449 coverage and pricing, be certain you clearly define and understand what the filing company 123 00:08:13,449 --> 00:08:15,720 lawyer will handle. 124 00:08:15,720 --> 00:08:20,389 Along those same lines, make sure the attorney you hire is licensed in the United States. 125 00:08:20,389 --> 00:08:24,680 While attorneys based in foreign countries may file your application, by law they are 126 00:08:24,680 --> 00:08:29,310 not permitted to communicate with the Office on your behalf or file responses to Office 127 00:08:29,310 --> 00:08:31,930 Actions, except in very limited circumstances. 128 00:08:31,930 --> 00:08:36,860 So, it makes sense to hire a trademark attorney licensed in the USA. 129 00:08:36,860 --> 00:08:41,491 For comprehensive legal help, consult your local telephone listings, the Internet, or 130 00:08:41,491 --> 00:08:45,720 the attorney referral service of your local or state bar association. 131 00:08:45,720 --> 00:08:49,029 Hiring an attorney is an investment, so make sure you pick a good one. 132 00:08:49,029 --> 00:08:51,680 The USPTO cannot help you choose an attorney. 133 00:08:51,680 --> 00:08:56,670 And remember, although attorneys generally charge a fee for their services, free and 134 00:08:56,670 --> 00:09:00,850 reduced-price options may be available for individuals and small businesses that meet 135 00:09:00,850 --> 00:09:03,210 financial eligibility requirements. 136 00:09:03,210 --> 00:09:08,810 For example, bar associations often have "pro bono" divisions that provide free legal services 137 00:09:08,810 --> 00:09:13,870 to those who can't otherwise afford them and those services may include trademark services. 138 00:09:13,870 --> 00:09:19,760 In addition, the USPTO supports a Law School Clinic program through which law students, 139 00:09:19,760 --> 00:09:23,580 under the guidance of a qualified faculty member, can assist you in the prosecution 140 00:09:23,580 --> 00:09:24,830 of your trademark. 141 00:09:24,830 --> 00:09:30,620 To learn more about the program, go to USPTO.GOV and search for the term "Law School Clinic." 142 00:09:30,620 --> 00:09:35,390 The website has a list of participating schools, Frequently Asked Questions, and contact information 143 00:09:35,390 --> 00:09:38,000 about how to become a client. 144 00:09:38,000 --> 00:09:42,570 Free and low cost business counseling, workshops, and mentoring are also available through the 145 00:09:42,570 --> 00:09:47,410 SCORE program, which is supported by the Small Business Administration. 146 00:09:47,410 --> 00:09:51,050 A SCORE volunteer may be able to help you with your trademark questions. 147 00:09:51,050 --> 00:09:54,530 Visit SCORE.ORG for more information. 148 00:09:54,530 --> 00:09:59,020 Additional resources about trademarks are available nationwide through Patent and Trademark 149 00:09:59,020 --> 00:10:00,460 Resource Centers or PTRCs. 150 00:10:00,460 --> 00:10:07,890 PTRCs are libraries that the USPTO has designated to receive and house copies of patent and 151 00:10:07,890 --> 00:10:12,030 trademark materials and to make patent and trademark information freely available to 152 00:10:12,030 --> 00:10:13,160 the public. 153 00:10:13,160 --> 00:10:20,190 You can find a PTRC near you by visiting the PTRC page on USPTO.GOV. 154 00:10:20,190 --> 00:10:25,260 The decision of whether to hire an attorney (or engage the services of the USPTO Law School 155 00:10:25,260 --> 00:10:27,620 Clinic certification program) is up to you. 156 00:10:27,620 --> 00:10:32,310 It all depends on your comfort level in dealing with legal issues, your knowledge of trademark 157 00:10:32,310 --> 00:10:36,870 law, and whether you have the time and energy to tackle the things that you need to do before, 158 00:10:36,870 --> 00:10:40,010 during, and after the registration process. 159 00:10:40,010 --> 00:10:43,970 Some applicants do perfectly well without hiring an attorney; others are thankful they 160 00:10:43,970 --> 00:10:45,140 did. 161 00:10:45,140 --> 00:10:48,890 The choice is really up to you and your business needs. 162 00:10:48,890 --> 00:10:52,490 Thanks for watching this Basic Facts Breakdown and we hope you learned a little more about 163 00:10:52,490 --> 00:10:57,200 what the USPTO does, what it doesn't do, and what factors you might want to consider in 164 00:10:57,200 --> 00:11:00,960 hiring an attorney to represent you before the USPTO. 165 00:11:00,960 --> 00:11:05,610 As always, for more information about trademarks, please explore the Trademarks section of the 166 00:11:05,610 --> 00:11:07,900 USPTO.GOV website. 167 00:11:07,900 --> 00:11:11,680 Along with other trademark related content, there is a link to the downloadable "Basic 168 00:11:11,680 --> 00:11:17,140 Facts About Trademarks" booklet, as well as links to the other Basic Facts Breakdown videos. 169 00:11:17,140 --> 00:11:18,140 See you next time. 170 00:11:18,140 --> 00:11:29,630 I'm Mark Trademan, Trademark Information Network.