July 8, 2010

Do I REALLY need to hire an attorney to file an application to register my trademark with the United States Patent and Trademark Office?

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.

May 27, 2010

What is a descriptive trademark? If my trademark is descriptive, can I obtain a Federal Trademark Registration to protect it?

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.

May 27, 2010

Someone else has registered a domain name that I believe infringes on my trademark rights? What can I do?

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.