Mistakes Trademark Owners Make: Failure to Research the Trademark

Why Does Research Matter?

One of the most common misperceptions regarding Trademarks is that anyone can obtain any Trademark name, logo, or phrase. This may seem to be the case especially as State Trademark Filing is usually a simple process that may not involve an extensive tradename and category search like the Federal registration process.

  • Filing for a Federal Trademark is always recommended as businesses often grow quickly, and the modern-day reality of selling products online, and shipping across state lines is likely the goal for your growing business, in the future if not immediately.
  • As US trade relations increase in the coming years, it will be crucial that you do not delay owning the claim to your business name.

Researching your potential Trademark prior to using it is a valuable financial investment, and can save yourself significant headaches later should a name or logo change be required.

Protect Yourself from Infringing on Others

One of the key reasons to do your research thoroughly before claiming and using a trademark name, is to protect yourself from infringing on others’ prior ownership of a name or logo. The US legal system gives priority of rights to Trademark Owners who have filed for registration of their Trademarks with the USPTO, but also provides some common-law legal protections, in some cases, to name owners who can prove long-term use of a name in association with the products they sell. It is better to know, before you use a name, if it is already being used and whether any exceptions to use might be available.

Hiring an Attorney v. Using Discount Legal Services

Why hire an attorney when there are discount legal services available? This is a legitimate question, and a common inquiry for new business owners who are launching their companies while often being budget-conscious during the start-up phase. New business owners should be mindful that the discount services often fail to provide key pieces of the trademark registration process that help ensure your Tradename or logo has a stronger chance of being approved by the USPTO. Discount services often do not provide an thorough search and analysis of your trademark in comparison to existing trademarks to verify that your mark has fair chance at approval. When hiring a lawyer to file your Trademark Registration, you should be receiving the option for a professional search of your tradename, an assessment of whether your tradename is a strong name, or is likely to be challenged by the USPTO, and the expertise of an experienced and knowledgeable lawyer who can guide you through the Trademark Search and Registration process.

Contact Behrends Legal today with your Trademark Registration Questions! info@behrendslegal.com

*This article is not intended to be construed as legal advice, and does not constitute the creation of an attorney-client relationship. Prior to making any significant decisions related to its content, you should seek the counsel of a licensed lawyer.

What is an Office Action from the USPTO?

One of the most discouraging events of filing for a Trademark is receiving an Office Action letters from the USPTO for refusal to register the trademark. This is also sometimes known as a “2(d) Refusal” for its refusal on the basis of the Trademark Act 2(d). While it is disheartening to receive an Office Action refusing to register your trademark, it often need not be the end of the story.

Determine the Cause for Refusal

When drafting the Office Action, the USPTO Examining Attorney is required to establish the legal basis and foundation for their refusal. Read your Office Action to determine the cause for the refusal. If the Office Action lists information that is incomplete to file the Trademark application, sometimes, all that is needed is for you, the Applicant, to make corrections to your application and fill in the missing basic information. However, sometimes Trademark Applications are rejected via an Office Action 2(d) refusal.

Responding to an Office Action 2d refusal can be more involved, and it is advisable to seek legal counsel. The most common basis for refusal is “likelihood of confusion” with another existing mark. This is generally based on the trademark names, or a similarity between the goods and services of the two trademarks.

While it is disheartening to receive an Office Action refusing to register your trademark, it often need not be the end of the story.

Respond to the Office Action with Legal Arguments and Mind the Deadlines

Filing a response to an Office Action is similar, in some ways, to filing a court appeal. A well-drafted response to the USPTO should include legal arguments that establish the reasons why your mark is unique and can coexist with other existing trademarks on the trademark Principal Register. The Response will also answer all of the Examining Attorney’s arguments. It is crucial to be mindful of the response deadline as failure to respond by the deadline results in the mark being labelled “abandoned” by the USPTO.

Although no one wants to receive an Office Action letter from the USPTO refusing registration of their trademark, there are options available to Applicants to make efforts to overcome the refusal. We can help at Behrends Legal today! Feel free to contact us. Our flat fees keep things simple for you!

We look forward to discussing your Office Action matter, and creating a plan uniquely tailored to you!  

P: 970-578-9455

E: rachel@behrendslegal.com