The simple answer is no, you are not required to hire an attorney to file an application to register a trademark with the USPTO. You are permitted to file an application yourself and the filing can be done electronically. There is no law which requires an applicant to hire a lawyer to represent the applicant with the USPTO. In the same manner of thinking, one is almost never required to hire legal representation for any type of legal matter. You are permitted, in most cases, to represent yourself in a murder trial.

The better question is this. Is it advisable to represent yourself at the USPTO. In the opinion of this writer, it is not. An experienced trademark attorney can advise the client with respect to the particular needs of the case. Furthermore, in many cases, it ends up being less expensive to hire a trademark lawyer to file the application properly at the outset, than to pay the lawyer later to amend an application that was improperly filed. Furthermore, a properly filed application is more likely to result in a trademark registration that issues at an earlier date that an improperly filed application. Moreover, in many cases, the Trademark Examiner prefers to deal with a trademark attorney rather than a pro se applicant who is not familiar with the law and the process and who tends to be more emotionally involved with the case. Finally, if your application is so filed sufficiently incorrectly, it may result in the application being denied and no registration resulting.

What constitutes trademark infringement? In other words, if a senior trademark user goes to court and sues another party for trademark infringement, what does the senior party need to prove? This is a complicated issue, but in general, the senior party would need to prove that there use of the allegedly infringing trademark is likely to cause confusion in the market place – so called “likelihood of confusion.” More specifically, the plaintiff would have to show that a significant portion of the relevant consuming public is likely to be confused by the use of the allegedly infringing mark by the defendant. Also worth noting is that likelihood of confusion is the same test that a trademark examiner at the United States Patent and Trademark Office will employ in determining whether a mark barred from registration because of previously registered mark.

How does one prove that there is a likelihood of confusion? The pivotal case on this point is the so-called du Pont case which lays out the factors that the court may consider in a consideration of likelihood of confusion. Among these du Pont factors are:

1. The similarity between the marks. The closer the marks are to each other, the more likely the court will find that there is a likelihood of confusion. Conversely, the more different are the marks, the less likely. It is worth noting that there is no requirement that the marks be identical in order to find infringement by the later adopted mark.

2. The similarity between the products or services sold under the trademark. Obviously, the more closely related the goods/services, the more likely the court will find infringement. The less closely related, the less likely a finding of infringement.

3. The strength of the senior mark. If the senior mark is strong, there is a greater chance that the court will find that there is a likelihood of confusion, and hence infringement. Generally, stronger marks are those that have been used for longer periods of time, have been more extensively used and advertised, and are inherently distinctive (i.e. not descriptive or generic.)

4. Actual confusion in the marketplace. Although there is no requirement to prove actual confusion in order to prove infringement, actual confusion is a factor which may be considered by the court.

5. The likelihood that the senior party will bridge the gap to selling products or services sold by the alleged infringer.

Marks that are “primarily geographically descriptive” are marks that consist primarily of a generally known geographic place or location. These marks are considered to be descriptive and are not immediately eligible for trademark protection absent acquired distinctiveness through continuous and exclusive use of the mark in commerce. Marks that are primarily geographically descriptive, like other trademarks should be free for all to use in a descriptive sense.

Mark that are primarily geographically descriptive may be eligible for trademark protection and trademark registration upon acquiring distinctiveness. This is the same rule of law that applies to any other descriptive trademarks. In other word, in the perception of the relevant consuming public, the mark which was once primarily geographically descriptive, has now become identified with the source of the product or service.

A different rule of law applies to trademark that are geographically deceptive. A mark is geographically deceptive if 1) the primary significance of the mark is a known geographic place or location 2) the goods or services do not originate in the geographic place in the mark 3) purchasers are likely to make the goods-place association, that is, purchasers are likely to make the assumption that the goods originate in the geographic plane or location, and 4) the misrepresentation regarding the geographic location is likely to be material in purchaser’s purchasing decisions. Marks that are geographically deceptive may not be eligible for trademark protection, and trademark registration, even with a showing of acquired distinctiveness.

A trademark is considered to be descriptive if it describes the product or service, or if it describes a characteristic, purpose, function, quality or use of the product or service. Under trademark law, a mark that is “merely descriptive” is not immediately eligible for trademark registration on the principal trademark register. (A mark that is merely descriptive may be eligible for registration on the Supplemental Trademark Register.) This law is logical, as marks that are merely descriptive are needed by competitors in the marketplace to describe their products or services, and the law frowns on taking terms out of commerce that competitors need to compete effectively. In a determination of whether a mark is merely descriptive, one or more words cannot be taken out of context. Instead, the entire mark, as a whole must be evaluated for descriptiveness.

A mark that is merely descriptive of the product or service may become eligible for trademark registration if it acquires distinctiveness. Acquired distinctiveness (so-called secondary meaning) is developed through use of a trademark over time in conjunction with the product or service. As such, the public now perceives the mark as identifying the product or service from a particular source and no longer as descriptive of the product or service. The United States Patent and Trademark Office considers continuous use for five years of a descriptive mark in commerce in conjunction with a product or service as prima facie evidence of acquired distinctiveness.

If you have trademark rights in a mark, whether or not your trademark is registered, you have the right to file a complaint with the National Arbitration Forum. This is a complaint pursuant to the Uniform Name Dispute Resolution Policy (a UDRP complaint.) There are formal requirements for the UDRP complaint that must be followed to the letter. The complaint is decided by one arbitrator or a panel of three arbitrators. The complaint must set forth the trademark or service mark upon which the complaint is based. Furthermore, the complaint must set forth the grounds on which the complaint is made. In particular, the complaint must describe the manner in which the allegedly infringing domain name is identical or confusingly similar to the trademark in which you have rights, why the Respondent should be considered as having no rights or legitimate interest in the domain name, and why the domain name should be considered as having been registered in bad faith.

One can lose rights to a trademark if a mark that was once distinctive becomes the common generic name for a product or service. This may occur when a trademark owner does not properly police the use of his or her mark. In one example, the word “escalator” was once a trademark for a brand of moving stairs, but because of improper policing of the mark it has become generic. The name of a product or service should always be capitalized. It should always be used in conjunction with the common generic name of the goods or service as in “Ford motor car” or “XYZ brand of toilet tissue”. Never use a trademark as a verb; it is improper to “Xerox a document” – instead, one photocopies a document using a Xerox brand copy machine.

Under trademark law, a mark must be distinctive (i.e. capable of distinguishing the product or service from others.) Thus, trademarks are classified according to their level of distinctiveness and are afforded protection according to their classification.

• Arbitrary or fanciful marks. The most distinctive marks are those which are arbitrary or fanciful. Arbitrary marks are those which have no relation to the goods (e.g. Apple for computers) and fanciful marks are coined or invented names (e.g. Kodak film). As long as they are not confusingly similar to other marks, arbitrary or fanciful marks are afforded the highest level of protection.
• Generic marks. On the opposite end of the spectrum of distinctiveness lie generic marks – the common name for the product or service. Generic marks are incapable of protection under trademark law because others need to use the common name to compete effective. Thus, one cannot claim trademark rights in the word ‘desk’ to identify the supplier of a desk.
• Descriptive marks. Between arbitrary/fanciful marks on one end of the distinctiveness spectrum and generic marks on the other end lie descriptive marks. These are marks which describe an attribute, function or use, characteristic, purpose or quality of the goods or services. Descriptive marks are only eligible for trademark protection if they acquire secondary meaning (consumer recognition of the term as a trademark.)