What’s in a name? According to William Shakespeare’s Juliet, who famously proclaimed, “That which we call a rose by any other name would smell as sweet” — not much. But try telling that to Nike® or Cadillac® or Lululemon® — companies who rely on consumers to seek out their products based on their brand names.
When it comes to protecting the name of your product or service, obtaining trademark protection is crucial to the success of your business venture. Imagine for a moment how much it would hurt both companies and consumers if multiple companies were allowed to manufacture shoes under the Nike® trademark; consumers wouldn’t be sure what they were buying and Nike® would have no incentive to sell well-made shoes. Trademark law prevents this from happening by legally protecting the trademarks of products and services through the trademark application process.
One of the first decisions you will need to make when applying for a trademark is whether to hire a trademark attorney or to attempt to file your application on your own.
While there is no rule requiring a trademark applicant to retain the services of an attorney, even the U.S. government recommends the use of an attorney to applicants. Furthermore, empirical evidence indicates that the assistance of a trademark attorney significantly increases the chance of a trademark application succeeding. A recent academic study found that an applicant was 43 percent more likely to succeed in registering a trademark if represented by a trademark attorney.
What Is A Trademark?
According to the United States Patent and Trademark Office (USPTO), a trademark is a “word, phrase, symbol or design… that identifies and distinguishes the source of the goods of one party from those of others.” The name “Google”, for example, is a word that most people immediately know and associate with a search engine. The Nike “swoosh” is an example of a symbol that has been trademarked. Even a phrase can be trademarked. Boxing announcer Michael Buffer owns the trademark to his famous phrase “Let’s get ready to rumble ®”.
The Trademark Application Process
In the United States, a trademark may be registered at the state or national level. Since the object of most companies is to gain brand recognition, registering the name on the national level offers more benefits than registering it in a particular state. Before completing an application, a thorough search needs to be done, ideally through professional grade search software, to ensure that the trademark is not already in use by someone else. Moreover, a thorough common law search should be conducted to determine whether or not someone else is using the trademark (but perhaps has not applied for trademark protection).
In addition to the complex search and application process, there are numerous additional points along the path to approval where an application can run into obstacles.
Either the USPTO or a third party may defeat an application before it achieves registration. Once an application is filed, a USPTO attorney reviews the application to determine if there are any reasons the trademark should not be approved. The Applicant must respond to or overcome these defects or refusals or the application will not be approved.
If, on the other hand, the examining attorney approves the application, it will be published in the Official Gazette. This opens up the application to third parties, who have 30 days to file an objection if they believe they will be harmed by the proposed trademark. Therefore, either the examining attorney or a third party has the ability to “stop an application in its tracks” — so it works in your favor to have an attorney who knows how to respond to these types of situations working with you during the process.
Does Hiring a Lawyer Make a Difference?
As mentioned earlier, an applicant for a trademark is not required by law to retain the services of a trademark lawyer. However, a recent academic study concludes that hiring an attorney has a positive effect on the outcome of a trademark application. The study analyzed data released by the USPTO covering a 25 year period from 1985-2010 to determine whether the assistance of an attorney makes a difference when applying for a trademark.
The researchers focused on two critical phases of a trademark application — publication and registration. A trademark may be approved for publication in the Official Gazette yet still fail to make it to registration because of an opposition proceeding or because the Applicant fails to show proper use of the mark. The data shows an 82 percent success rate at the publication stage for applicants who were represented by an attorney versus a 60 percent success rate for those who proceeded without legal representation (pro se). At the registration stage, the data shows a 60 percent success rate for applications with an attorney while attorney-less applicants only showed a 42 percent success rate. Overall, the study concluded that an applicant was 43 percent more likely to succeed to registering a trademark if represented by counsel.
Not surprisingly, there was a dramatic difference in success rates between pro se and represented applications when an office action was filed by the USPTO. An office action is issued when the examining attorney finds a defect in the application or uncovers another reason why the trademark cannot be approved. The data indicates that when an office action was filed, the obstacle was overcome 72 percent of the time when the applicant had an attorney compared to only 45 percent of the time when the applicant filed pro se.
To ensure that other factors were not responsible for the disparity in success rates, the study also attempted to account for the type of applicant. In other words, does a large business have a better chance of success when filing pro se than an individual entrepreneur? They looked at over 27,000 applicants who had filed two applications, one with an attorney and another without. The results remained fairly consistent with the overall data. Applicants with counsel showed a 79 percent publication success rate compared to a 61 percent success rate for their pro se counterparts. At the registration stage, applicants with representation fared even better, with a 64 percent success rate compared to a 47 percent success rate for pro se applicants, showing a 36 percent increase in the number of applications that made it to registration for applicants who were represented by an attorney.
Based on their detailed analysis of the data supplied by the USPTO, researchers concluded that the assistance of an experienced trademark attorney does make a significant difference in the success of a trademark application.
Content was created by Joshua Gerben, a trademark attorney at Gerben Law Firm, PLLC. Gerben Law Firm is a law firm that focuses specifically on trademarks for individuals and businesses throughout the United States. Services include maintenance like renewals and monitoring as well as full engagement which includes application processing, search and registration.