Today I want to discuss a very good question that I was asked by a potential client: “Why should I pay you to handle this when I can do it myself?” That’s a great question that is perhaps too easily dismissed by reciting the old canard: “a person who represents himself has a fool for a client.” Of course you can file your own trademark application. The USPTO has great on-line tools, they accept all major credit cards, and a reasonably intelligent person could crawl through the menu and have an application on file in a very short period of time. As Emeril would say: “Bam!” You do not need a lawyer for that. But, there is much more to it than the mechanics of e-filing. Here is a non-inclusive list of reasons to use a trademark lawyer.

A client came to me with a classic trademark problem. She had looked at the PTO web site and had not found a mark identical to hers so she filed the application. But the Examining Attorney rejected it because he thought it was “merely descriptive” of the goods. She asked me what I thought and what it would cost to challenge it.

I took a deep breath and suggested that she save the money because the Examining Attorney was right and the likelihood of overturning the decision was remote. Here’s why:

Clients ask me this question regularly.  Sometimes it is for an application they filed themselves.  Other times it is for an application that I filed for them (which can be somewhat embarrassing to explain.)  The general answer is the subject this week’s blog.

A trademark application must clear two hurdles at the United States Patent and Trademark Office.  First it must be approved by an attorney in the Trademark Office (called an “Examining Attorney”).  If it clears that hurdle it must survive the thirty-day publication and opposition period without being opposed by someone.  (And if it is opposed the Applicant must win or settle that proceeding).

By now, anyone with an e-mail address has received an e-mail from a “distinguished official” in Nigeria who has a sob story and millions of dollars to transfer to the United States if only he had a proper bank account.  So he asks for your banking information and promises you a million dollar commission if you help him out.  And by now everyone knows this is a scam.   The scammer is looking for your personal information so that he can siphon money from your bank account and do nasty things with your identity.  The proper response is to delete the e-mail without responding.  Unfortunately, there are also scammers in the trademark world.  Here are several of the most common scams:

Trademark rights are “territorial.” This means that a brand owner must affirmatively create trademark rights in each country of interest. In 95% + of the countries in the world, the trademark rights go to the first person to file an application to register the mark. Once that application matures into a registration, the owner of the registration has the exclusive right to use the mark on those goods in that jurisdiction (subject to any prior registrations). Thus, for example, if you are happily doing business in the United States and decide to move into a country where someone else has the trademark rights, they can stop you. That’s what happened to my client.

In order to qualify for patent protection, an invention must be useful, novel, and non-obvious over the prior art. These scientific criteria transcend national boundaries and are measured by the totality of the scientific knowledge base. Thus, for example, once a specific type of packaging enters the global knowledge base – either through use or through the filing of a patent application – it becomes “prior art” to all future “inventions.” Therefore, in this case, the fact that the packaging was already in the market made it part of the prior art and foreclosed patentability even though it may have been unknown in the USA. (Assuming, or course, that the container itself would have met these criteria.)

Brand names, or trademarks, are an integral part of a business plan. People spend many hours thinking about the “right” name for their product, the “product story,” and the marketing pitch. After investing so much time and energy into the creative process, it is natural for entrepreneurs and marketing people to want to “get going” and get the product onto the market.

A commonly asked question is: I registered my corporate name with the State so why do I have to register it as a trademark?  The answer is: because one is apples and the other is oranges.  Let me explain.

 A client sent me a demand letter from a lawyer. The letter said that his client owned a registered trademark for wine that was very similar to my client’s trademark that was also used on wine. My client had registered his trademark on his own about a year ago. He thought the letter was ridiculous because he had registered his mark first. 

 Last week I wrote about cybersquatting and how you can fend off a demand letter. This week I am looking at the flip side of the coin, namely, how can you get “your” domain name back.