Do you even need a trademark lawyer?
Nowadays, there are so many options for filing a trademark application with the USPTO. Just like anything else on YouTube, you can even find do-it-yourself videos on filing trademark applications. With all this free advice readily avaiable, why do you even need to choose a trademark attorney?
Time Is More Valuable Than Money: How A Good Trademark Attorney Will Save You Time (and money!)
Did you know that the backlog at the USPTO is roughly 8-10 months for a trademark application? That means that it can take almost a year from the filing date of your trademark appliation before a USPTO examiner (“examining attorney”) reviews it. If everything goes smoothly, great! You’ll be on your way. But, what if it doesn’t work out the way you planned? What if you get a refusal? What if a third party opposes your trademark application?
Lawyers with integrity will not guarantee results, but experienced trademark attorneys can help you navigate around potential obstacles to reduce risk. Instead of promising you a result, we seek to put you in the best position to get your desired results. So much of what happens in a successful trademark registratoin occurs before the application is filed.
What pre-filing due diligence can increase your probability of success in registering a trademark?
An experienced trademark attorney knows how to do a knockout search for similar live trademarks in the USPTO trademark database. It’s not simply a matter of searching for exact marks (basic word mark search), which anyone can do. I prefer to delve deeper by using the Free Form search of TESS.
With the Free Form option, a searcher can use a variety of different fields to search for trademark filings. Moreover, you can truncate words in order to find more search results.
For example, suppose your trademark contained the term BICYCLE. It would be helpful to find any plural versions of the (i.e., BICYCLES) and any present participles or gerunds (e.g., BICYCLING). You will also want to search for nicknames and abbreviated forms of word (e.g., BIKE and BIKING).
Does your trademark contain numbers, dashes or special punctuation? If so, it may be prudent to search for marks that contain variations of those characters.
This is what experienced trademark attorneys do. Consider the value of saving a year’s worth of time by finding similar marks upfront. Having this knowledge earlier gives you the opportunity to pivot to a new mark before filing your trademark application.
Even if you decide to move forward with your original mark, the trademark search results can help shape your identification of goods and services. In particular, your description of goods and services can be carefully crafted to minimize overlap with those of the registered marks found in the search.
What should you do if your trademark application is opposed?
It’s always a bit of a downer to receive a notice of opposition after your trademark application had been approved. In some cases, however, there may be hope for an early settlement that would not require a huge investment. Sometimes the opposer is looking for coexistence or a certain compromise that might allow for your trademark application to proceed to registration.
If there is a chance that the opposer may settle for something less than killing your trademark application, you want a trademark attorney familiar with TTAB trademark proceedings who can guide your case to an amicable resolution.
Need to choose a trademark attorney?
Contact experienced patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you avoid delays and obstacles in registering your trademark.
