If the USPTO uses a licensed attorney to examine your trademark application, should you consider having an attorney on your side when you file it?
It is an important question for business owners who increasingly encounter online services offering inexpensive trademark application filing. These services can make federal trademark registration appear to be primarily an administrative process: provide a name, select some information about your business, pay a fee, and submit an application.
But that is not how the United States Patent and Trademark Office treats a trademark application.
After an application is filed, the USPTO assigns it to a trademark examining attorney. That attorney reviews the application to determine whether it satisfies federal legal requirements and whether the proposed trademark is entitled to registration.
In other words, a trademark application is not simply paperwork. It is an application for federal trademark rights that will be examined under federal law.
Does the USPTO Really Have Attorneys Review Trademark Applications?
Yes.
Trademark applications are assigned to USPTO examining attorneys. The USPTO requires its trademark examining attorneys to have law degrees and active bar membership.
Their job involves considerably more than checking whether the boxes on an application have been completed.
During examination, the examining attorney reviews whether the application complies with applicable trademark laws and rules. The attorney also searches USPTO records for potentially conflicting trademarks, evaluates the identification of goods and services, reviews the applicant’s filing basis and, when applicable, examines specimens showing how the trademark is being used.
The examining attorney must ultimately determine whether the proposed trademark may proceed toward federal registration.
Why Does a Trademark Application Require Legal Analysis?
Federal trademark registration involves legal rights, and many of the decisions involved in preparing an application require judgment before the application ever reaches the USPTO.
For example:
- Is the proposed mark legally protectable?
- Could an existing mark create a likelihood-of-confusion problem?
- Are the goods or services identified appropriately?
- Who should own the application—the individual, an LLC, a corporation, or another entity?
- Is the proper filing basis being claimed?
- Is the applicant already using the mark in commerce, or should the application be filed on an intent-to-use basis?
- Does the specimen actually demonstrate trademark use?
- Does any wording in the mark create a descriptiveness or disclaimer issue?
Those are not simply data-entry questions.
The answers can affect whether the application registers and, just as importantly, the scope and value of the resulting trademark rights.
Doesn’t the USPTO Search for Conflicting Trademarks Anyway?
Yes—but the timing matters.
The USPTO examining attorney searches the federal trademark database for conflicting registered and pending marks during examination. If the examining attorney concludes that the proposed mark is confusingly similar to a registered mark used with related goods or services, the USPTO may refuse registration based on likelihood of confusion.
That official search occurs after the applicant has already selected the brand, paid the filing fee, and submitted the application.
A comprehensive trademark search conducted before filing serves a different purpose: identifying potential obstacles while the business owner still has the opportunity to evaluate the risk and make strategic decisions before investing further in the application and, potentially, the brand itself.
What Happens If the USPTO Examining Attorney Finds a Legal Problem?
The examining attorney may issue an Office Action.
An Office Action is an official USPTO communication identifying legal problems with the proposed trademark or the application. Some Office Actions involve requirements that may be relatively straightforward to address. Others contain substantive refusals that require legal analysis and argument.
For example, an examining attorney may refuse registration because of a likelihood of confusion with an existing registered trademark. The USPTO may also raise descriptiveness, specimen, identification-of-goods-and-services, or other issues.
At that point, an applicant who believed trademark registration was simply a filing process may discover that the matter has become distinctly legal.
What If I Used an Online Trademark Filing Service?
The important question is not simply whether a service can submit an application to the USPTO.
The better question is: what legal analysis is being performed before the application is filed, and who will advise you if the USPTO identifies a problem afterward?
Business owners comparing trademark services should understand exactly what they are purchasing.
Does the service include a comprehensive clearance search and legal analysis of the results? Is an attorney evaluating registrability before filing? Who determines the appropriate owner, filing basis, goods and services, and application strategy? If an examining attorney issues a substantive Office Action, does the service include legal representation in responding?
A low initial filing price and comprehensive trademark representation are not necessarily the same service.
Am I Required to Hire a Trademark Attorney?
Not every U.S.-domiciled trademark applicant is required to hire an attorney to file a federal trademark application. Foreign-domiciled applicants, however, are required by the USPTO to be represented by a U.S.-licensed attorney.
For a U.S. applicant, the more useful question is often not whether an attorney is mandatory, but whether legal guidance makes sense given the importance of the brand and the federal rights being sought.
A business owner may be perfectly capable of entering information into an online application. The more difficult questions involve determining what should be entered, evaluating legal risks before filing, and responding strategically if the examining attorney raises an objection.
If the USPTO Has an Attorney Reviewing the Application, Who Is Evaluating It for You?
That is the point business owners should consider before choosing a filing method.
On one side of every federal trademark application is a USPTO examining attorney whose job is to evaluate the application under federal trademark law.
The applicant should decide how much legal analysis should occur on the other side before that examination begins.
For an important business name, product name, service brand, or other valuable trademark, the cost of obtaining legal guidance should be considered in relation to what the business is actually trying to protect: a brand that may accumulate substantial goodwill and value over many years.
Trademark registration is not simply about successfully submitting an application. The objective is to develop and protect valuable trademark rights.
Bales & Bales Helps Businesses Protect Their Brands
Bales & Bales, P.A. assists businesses, entrepreneurs, and brand owners with federal trademark matters, including trademark clearance and analysis, USPTO applications, Office Actions, and trademark protection strategy.
Our approach begins before the application is filed. We evaluate the proposed mark, consider potential conflicts and registration issues, and work with the applicant to develop an appropriate filing strategy.
If you are considering federal trademark registration—or have already filed an application and received an Office Action—we invite you to contact Bales & Bales, P.A. to discuss your trademark and the appropriate next steps.
This article is intended for general informational and marketing purposes only and does not constitute legal advice or create an attorney-client relationship. Trademark matters are fact-specific, and applicants should obtain advice regarding their particular circumstances.