Pro Se Trademark Applicants – Proceed With Caution
Recently, we reviewed a Trademark Trial and Appeal Board decision that once again reinforced that far too many trademark applicants are filing and litigating their trademark cases pro se (without the advantage of having an experienced Trademark Attorney help them through the process). This particular case involved a dispute over the famous BROOKLYN NETS trademark highlights many of the issues we see when pro se applicants refer cases to us after a problem arises mid-stream.
Certainly we appreciate that it may seem that since the Patent and Trademark Office records are online, that anyone can and should file and handle their own applications and subsequent prosecution before the Office, but for the reasons outlined below, this can often lead to an undesirable result. Consulting with experienced trademark counsel early may actually be a more cost effective option.
Consider the following:
1. Choosing your mark
I get calls all the time from potential clients who have allegedly searched their mark on the USPTO website, only to find out later there is an issue with the client’s mark. Please be sure to choose a mark that is distinctive and unique, and one not used by your direct competition. An experienced trademark attorney can help guide you as to the possible risks of any marks you are considering. Remember, trademarks serve as source identifiers and as such there can only be one in your competitive set. Searching is an art form not a science. Trust the searching to those trained to do so.
2. Ownership issues
This is by far the #1 issue we see in pro se applications. If your trademark application is not properly filed in the name of the proper trademark owner, this can be difficult and sometimes impossible to correct later. Your application and resulting registration may become void and/or subject to cancellation.
3. Use in interstate commerce
A difficult concept to understand and all Federal Trademark applications must meet this threshold requirement. Moreover, specimens of use, must show “use in commerce” for the applied for goods. Generally, applicants only get one bite at the apple to demonstrate this. State trademark registrations do not provide evidence of use.
4. Drafting identification of goods
Certainly the Acceptable Identification of Goods and Services Manual on the USPTO website can be instructive, but what if your contemplated goods and/or services is not there? Your identification of goods is the one of the most important parts of your application – be sure to discuss this with an experience trademark practitioner. Most pro se litigants receive office actions from the Trademark Office asking for further specificity and/or a revision to the goods identification.
5. Miscellaneous statements
Do not provide any other information on the application without understanding the legal implication of doing so. Please consult a qualified trademark attorney before filling in any of these boxes, as doing so may restrict and/or effect your trademark rights.
If you decide to oppose or cancel a mark or are otherwise involved in litigation, remember that you could lose your registration or application, so instead of litigating pro se, please hire an experienced trademark practitioner, and one who is familiar with Board proceedings. In a recent case we reviewed, the pro se litigant was not familiar with basic Board procedure and litigation practice. As a result, he ultimately lost his trademark rights.
Remember, trademark law is extremely detail oriented. Practitioners focus in this area for a reason and those who make their living in this area of law are best equipped to help you build your brand and your business. If you have any comments or questions regarding this post, please Contact us.
Stacey C. Kalamaras is the founding partner of Kalamaras Law Office, LLC. She has extensive intellectual property experience with a focus on trademarks and copyrights, as well as advertising issues related to promoting clients’ brands. Stacey has been recognized by her peers as a Super Lawyer® for her outstanding knowledge and services in intellectual property law. She can be reached at firstname.lastname@example.org.
Stacey is also the founder and lead instructor of Trademarkabilities™, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be efficient and effective practitioners before the USPTO. To learn more, please visit https://www.trademarkabilities.com/.