Individuals or businesses intending to file a trademark application should carefully consider whether to file an application on their own or hire an attorney to oversee the process. Potential filers must understand how to identify relevant goods or services, differentiate between an intent-to-use and use-based applications and determine the date of first use of the trademark. While the United States Patent and Trademark Office (USPTO) provides advice and resources for filers, there are several potential pitfalls that inexperienced filers can encounter which can be avoided through attorney oversight.
The USPTO maintains a list of goods and services in the Acceptable Identification of Goods and Services Manual, which contains the various categories of goods and services approved by the USPTO for trademark registration. However, in the event a particular good or service you are seeking to register does not explicitly appear in the listing, you will need to identify which category your product most closely conforms to within the choices available. If you do not properly identify the category, you could face a denial of your registration application.
A second consideration is whether you have conducted, or have the ability and/or resources, to perform an exhaustive trademark search for substantially similar marks that are likely to cause confusion about the source of the goods. Typically, the examination should be more thorough than simply searching the USPTO database. An experienced intellectual property attorney has vast experience in conducting such searches and identifying potentially troublesome marks.
Last, a filer may be unaware of how to handle more intricate questions that arise in the course of trademark registration. These may include whether you can apply for a mark that is already in use for a different type of product or service, or how narrowly you should draft the description of goods and services you intend to cover to ensure adequate protection for your marks.
Connors & Associates provides experienced legal advice in the areas of patent, trademark and copyright law. Contact Connors & Associates at (949) 833-3622 or visit them online to learn more about our services or to schedule a consultation.