Filing an application to register a trademark initiates a legal proceeding with the United States Patent and Trademark Office (USPTO) that is intricate and complicated. Anyone who uses the Internet can conduct a search to see if a specific name is available, but there is no assurance that the information is either accurate or complete.
The search for the availability of a unique name may seem like the first step in the application process, but the need for decisions on important details precedes it. Identifying the mark format and enumerating the goods and/or services described in the application are two of the exacting areas that require the knowledge of an experienced lawyer.
The USPTO recommends that applicants use the services of a private attorney. A misstep at the beginning of the process can result in delays and unnecessary expense as a minimum of problems that can occur from improper filing. The study of trademark law requires students to take courses in intellectual property rights and seminars that investigate the complex ramifications of the law, indicating that applying for a trademark is not an appropriate task for novices.
After the search is completed and if it produces no matches for the searched term, the next requirement is to identify the proper basis of the trademark application. The options include establishing that the trademark is in “use in commerce” or else that there is“intent to use”. The fine legal point that lies between the two descriptions is based on whether all of the goods or services named in the application have a history of using the symbol. A lawyer who has a complete understanding of the distinctions can help the process move along, while an error in designation is one of only a few missteps that the USPTO allows prior to outright rejection.
Filing the application opens another set of opportunities for mistakes in submission, starting with the need to choose the correct version of the form to submit. The choice is between one that is less expensive but requires adherence to stricter requirements and one that is easier but more expensive. Without the guidance of an attorney who has worked through the process many times, a novice is unlikely to know how to make the best decision. Paper applications are accepted by the agency, but they are not processed as rapidly as those that are submitted over the Internet. Experience is the best guide, and only practicing attorneys can claim to have enough of it to thoroughly understand the process.
The importance of establishing a valid trademark points to the need to submit a perfect application under the guidance of a knowledgeable and experienced u.s. attorney.