If you are an American citizen and/or you are an American company that has established its business entity within the United States, you are not by law required to have an attorney file your trademark application. However, if you a foreign citizen and/or a foreign company, you are required to have a U.S Attorney apply for and manage your trademark with the United States Patent and Trademark Office (USPTO). This article will dig into this topic in depth and consider the benefits of having a US Attorney represent a trademark applicant and the corollary risks of filing a trademark on one’s own behalf.
USPTO REQUIRES FOREIGN APPLICANTS TO RETAIN A LAWYER TO REGISTER A U.S. TRADEMARK
Due to a reported surge of fraudulent trademark activities, the United States Patent Trademark Office (USPTO) is enforcing a new rule that will require individuals not living in the U.S. to seek representation for trademark matters in this country. The attorney whom they retain must be licensed to practice law in the U.S.
This new legislation, which became effective less than a year ago, is responding to an increase in suspicious specimens of use and unauthorized legal practices. According to the legislation, anyone with a permanent legal residence or principal place of business outside the U.S. and its territories, who applies, registers, or is a party to a trademark filing, cannot present his or her case themselves. Only a U.S. licensed attorney has authority in these matters, including, subsequent responses to Trademark Office Actions.
While this type of rule is enforced in other countries, it is new to the United States. Legislators believe, by putting the rule into effect, that it will increase the preciseness of trademark submissions and maintain compliance and accountability. With this initiative in place, lawmakers can ensure the integrity of the trademark. Here is what the USPTO has stated about the new rule specifically:
“For close to 150 years, these two interrelated elements have performed relatively well to protect our trademark system from improper behavior and false claims of use. Unfortunately, in the past several years, we have seen a rise in improper behavior before the USPTO, including fake specimens of use and other false claims of use, unauthorized changes to applications and registrations, as well as other improper activities…The requirement of a U.S. licensed attorney will increase the accuracy of the submissions to the USPTO, increase accountability and compliance with U.S. law and regulations, and help to ensure the integrity of the trademark register.”
ENSURING AUTHENTIC TRADEMARK SPECIMENS
Recall, Trademarks can only be registered in the U.S. if they are used in conjunction with the sale of a good/service sold in interstate commerce. No actual “Use” – no Trademark. If the trademark applicant filed a 1(a) trademark application, the applicant submitted a specimen illustrating how the mark is in fact used in conjunction with the sale of the good/service at the time of filing while if the applicant filed a 1(b), intent-to-use application, the applicant must provide at a later date a Statement of Use along with the requisite specimen.
Part of the reason for the new law relates to a sudden increase in suspicious Specimens, believed to result from the inaccurate or false submittal of claims. Whatever the reason for this problem, it is a very serious problem indeed and trademark examiners can no longer rely on the authenticity of the claim/s. The idea behind the new law is that by requiring a registered US attorney to file and manage the trademark application, the USPTO can better ensure that trademark-reporting activities remain honest and ethical.
FOREIGN TRADEMARK ATTORNEYS MAY REQUIRE ASSISTANCE TOO
One important addendum to make is that historically, many applications filed with the USPTO, were drafted to appear as if they were drawn by the trademark applicant himself, while in reality, as it was later discovered, a foreign lawyer had submitted the applications in bad faith and/or incompetently. By making it a requirement for foreign-based applicants to be represented by a U.S. licensed attorney, any bad practices and advice by ill-informed foreign practitioners can be put to a halt. Importantly, US citizens and permanent residents who are availing themselves of the Madrid Protocol for international filings are not required to use a US trademark attorney.
USPTO TRADEMARK EXAMINERS ARE GETTING SAVVIER
Legislators and the USPTO must use several methods to reduce fraud and illegal activities. For instance, besides making it a requirement to hire a U.S. based attorney, the USPTO must work with professionals who write and enforce policies, or who have IT experience, to identify improper trademark activities. To this end, the USPTO has created a task force with trained personnel with policy and IT expertise to actively identify and flag illegitimate filings. Furthermore, the USPTO has instituted a training program for trademark examiners who are now instructed to refuse trademark registration for specimens that appear fraudulent.
FILING YOUR OWN TRADEMARK APPLICATION
Any American company or U.S. citizen can technically apply, without the assistance of a US Attorney, for a trademark to secure its logo, brand names, slogans, or even idiosyncratic sound. However, the trademark application process is long and complex and the chances of obtaining a favorable outcome with the USPTO is massively improved when the process is facilitated with a trademark attorney.
TRADEMARK SEARCHES ARE ESSENTIAL
There are a great number of conceptual and pragmatic choices that must be made before, during, and after the filing of the Trademark Application. The first, and arguably most important of which, is the contemplation of the eligibility of the prospective trademark vis-à-vis its distinctiveness and the subsequent clearance search of the trademark in the USPTO database. When you hire an attorney experienced in trademark law, he will be able to recognize whether or not the mark is in fact registrable (from the perspective of trademark jurisprudence) and if so, whether or not there are any existing trademark applications, pending or registered, which would bar the admission of your mark.
THE APPLICATION FORM
Like all things bureaucratic in nature, details really do matter to the USPTO and when filing out the form, every item requested must be answered correctly and sufficiently. The specific nature of the filing can make or break the approval. For example, “goods” and “services” trademark filing classes are strictly and separately defined. If the applicant does not appreciate the difference between “non-downloadable computer software” and “downloadable computer software”, he may mistakenly misclassify the description. The misclassification of products and services not only risks the infringement on another trademark (that is ostensibly not the “same thing”) and can turn the entire trademark registration process into a much costlier and time-sapping experience. Indeed, Trademark Office Actions are onerous and potentially very challenging to overcome. A trademark attorney can help you navigate through some of these pitfalls.
ENSURING AUTHENTIC TRADEMARK SPECIMENS
Recall, Trademarks can only be registered in the U.S. if they are used in conjunction with the sale of a good/service sold in interstate commerce. No actual “Use” – no Trademark. If the trademark applicant filed a 1(a) trademark application, the applicant submitted a specimen illustrating how the mark is in fact used in conjunction with the sale of the good/service at the time of filing while if the applicant filed a 1(b), intent-to-use application, the applicant must provide at a later date a Statement of Use along with the requisite specimen.
Part of the reason for the new law relates to a sudden increase in suspicious Specimens, believed to result from the inaccurate or false submittal of claims. Whatever the reason for this problem, it is a very serious problem indeed and trademark examiners can no longer rely on the authenticity of the claim/s. The idea behind the new law is that by requiring a registered US attorney to file and manage the trademark application, the USPTO can better ensure that trademark-reporting activities remain honest and ethical.
THE TRADEMARK APPLICATION PROCESS TIMELINE
The application process timeline is on the USPTO’s website but as a general matter, from beginning to end, a trademark applicant can expect the process to take between 5-10 months, depending on whether or not there are any Office Actions issued down the line.
The first step is the preliminary search for conflicts with existing trademarks. Again, the idea here is to determine if the mark itself is eligible for trademark protection and then to discern if there are any existing marks which might bar the application’s admissioin. The application must then be filed with the correct business information for goods and services as well a chosen filing basis for the trademark. Four our filing bases exist: “use in commerce”, “intent-to-use”, “foreign registration”, and “foreign application”. You must choose a basis before submission. As you can see, this is again an area where having a trademark attorney walk you through the decision making process can be beneficial; This is especially true if you are not clear on the Use in Commerce Requirements.
It takes between three and four months for a submitted application to be reviewed by a trademark examiner who will work to determine the eligibility of the trademark vis-à-vis distinctiveness and Conflicts or errors both internal and external (likelihood of confusion) to the application. If there is a problem, procedural or substantive, an Office Action will be sent to the applicant. The applicant then has 6 months to cure the defects in the office action. While certain procedural issues may be on the easier side for laymen to overcome, the applicant will with near certainty require an experienced trademark attorney to manage Substantive issues like Descriptiveness rejections and Likelihood of Confusion rejections. Of course, working with your attorney in early stages of the application process can avoid Office Actions all together.
Given there are no conflicts and an Office Action is not issued, a ‘publication’ period begins in which third parties can contest the trademark application if they feel it’s detrimental to their interests. Here, any part that has a legitimate interest in the trademark’s registration has the right to protest and explain why the trademark should not be approved. Likelihood of confusion with the objector’s existing trademark is a classic basis for a trademark opposition proceeding. If the trademark is uncontested for the 30 days that it sits on the Official Gazette, a final review is conducted. You will need to provide for this review evidence that you are using the trademark in your business (assuming that the trademark was filed as a 1(b), intent to use). When approved, the completed trademark registration will be sent to you by the USPTO and a formal record of the registration will be published in the USPTO register (ideally, Principal Register).
A TRADEMARK ATTORNEY CAN HELP
If you are a foreign applicant, you will need to hire a US attorney to file your trademark application. If you are a US citizen, you may not need to use a US trademark attorney but you will likely be saving yourself a lot of time, money, and aggravation if you do.
