Technically, No Attorney Is Needed for a Trademark Registration Filing
Fortunately, the Trademark Office does not give a trademark application filed by a lawyer any preferential treatment. Trademark examiners
(and the online trademark registration system) actually take steps to provide additional guidance to trademark applicants working without a lawyer.
What Really Counts in Your Trademark Registration Application
What counts is whether your application is correctly completed and whether your proposed trademark actually qualifies for federal registration. People
often make the mistake of trying to register a trademark that simply doesn’t qualify for registration because, for example, the trademark is
generic/descriptive or the trademark is too similar to an already-registered trademark.
How a Trademark Attorney Can Help in the Registration Process
The trademark application itself appears deceptively simple. However, there are some application mistakes which can only be corrected by starting
over again and filing a new registration application. The trademark application becomes more complicated if you seek to register a design or logo
rather than just a word. Using a trademark attorney should help you avoid many common application mistakes.
If someone opposes your trademark registration application, that is the point where you should definitely consider retaining a lawyer. Fortunately, most
trademark registration applications do not generate oppositions from third parties.
Some Trademark Registration Tips for Those Not Using a Trademark Attorney
I offer several trademark registration tips as well as a sample completed trademark application in my book, The Cyber Citizen’s Guide Through the Legal
Jungle: Internet Law for Your Professional Online Presence. Although the focus of the relevant chapter is registering domain names as trademarks,
many aspects of the discussion apply to all trademark applications.
One tip is to try to take the description of your goods and services directly from The Trademark Office’s Acceptable Identification of Goods and Services
Manual. As part of the application process, you must describe the goods and/or services with which you use the trademark. In trademark jargon,
this description is called an identification.
Describing your goods/services sounds easy, right? However, unacceptable identification(s) is a common reason for the issuance of Office Actions
(i.e., an initial rejection of your trademark application). The Trademark Office’s Acceptable Identification of Goods and Services Manual lists
identifications for specific goods and services that the trademark examiner will accept without further inquiry as long as the specimens (i.e., examples
of how you use your trademark) submitted with your application are consistent with the identification.
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