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The US Patent and Trademark Office (USPTO) is a complex body with its own set of rules and norms, with which many attorneys are unfamiliar. However, there are no specific requirements for attorneys to file trademark applications with the USPTO. This can result in situations where an attorney new to trademark practice is learning on the fly, which can cause inefficiencies and backlogs in the system. How can new trademark practitioners best prepare themselves for trademark practice and protect their clients interests in front of the USPTO? Check out these three tips below:
1. Protect the Word Mark
Word marks in standard characters enjoy the greatest scope of protection, so, whenever possible, make sure you file for your client’s word mark before filing for any stylized mark, logo design or composite mark (word mark plus logo design). If a trademark search reveals the mark is descriptive or otherwise weak, your best strategy may be to file for stylized or composite mark to secure the registration. In any case, an initial search will help you determine the best course of action.
2. Identify the Proper Owner
Ownership is a threshold issue at the USPTO. Failure to file the application in the name of the proper owner may result in your application — and the resulting registration — being void ab initio. The proper owner is the entity that “controls the nature and the quality of the goods sold and the services rendered.” Generally, this is the entity that controls the purse strings related to the goods and/or services in connection with the mark. It’s very unusual for an individual to own a mark that is used commercially, so if your client will be conducting any sort of business connected to the mark, make sure their corporate identity is all set up before you file the application, as any assignments for intent-to-use applications in particular (absent a transfer of the business to which the mark pertains) are prohibited.
New rule alert: Remember that the new rules established as of February 15, 2020, require all trademark owners – regardless of whether they are represented by counsel – to provide an email address when the application is filed. The reason makes sense – the USPTO needs to get in touch with applicants, especially for serving opposition and cancellation complaints which are increasingly difficult for foreign applicants and registrants. We recommend that a special email be established for this purpose. You can counsel your client to set up a special email address something like legal@company.com or a dedicated email address will satisfy the new rule.
3. Properly Identify the Goods and/or Services
All the goods and/or services that a client intends to use in connection with the mark should be identified in the application. The challenge for any trademark attorney is to draft the identification as broadly as possible while still conforming to the narrow requirements of U.S trademark practice. During intake, be sure to ask your client about the scope of their business and key competitors so that you get an idea of what they do and who they compete with. Consult the Trademark ID Manual for suggestions to ensure your identification complies with the U.S. trademark rules of practice. The more closely your identification follows the ID Manual, the greater your chances of approval. If what you’re seeking is not in the ID Manual, consult recently issued registrations for guidance. Also, avoid drafting repetitive descriptions, as this type of identification will be ripe for auditing during maintenance and renewal, since you will be required to submit specimens for each clause. A more complicated identification may also prove more difficult for a trademark owner to use long term. When goods and/or services are still under development, but you want to secure a priority date, it’s always an option to file broadly and narrow later. The rules never allow you to broaden the identification. Ultimately, each good and/or service in the identification will need to be supported with a proper specimen before the registration can issue.
To learn more, check out How to Be an Effective Trademark Practitioner Before the USPTO.
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