A recent article from Bloomberg News discusses the effect a company called Trademarkia has had on IP attorneys that are generally hired to file patent requests. Bloomberg reports “While entrepreneurs can file trademark applications with the U.S. Patent and Trademark Office (USPTO) on their own, many pay attorneys $150 to $500 per hour to handle the complex process. Since Trademarkia made its debut in 2009, the legal website has streamlined and made the task cheaper.” Trademarkia -- it is not about "angering IP lawyers," but rather it is about the disservice to unknowing and unsuspecting applicants who save a little money at the start but miss out on opportunities to obtain really valuable intellectual property rights that can add significant value to their business' bottom line. Treating the trademark filing and registration process as a mere "task" misses a major component of legal advice to clients. Foresight is the key to success.
A licensed attorney well versed in U.S. Patent and Trademark Office practice and procedure may be able to make filing a trademark application result in increasing a company's bottom line in terms of asset valuation. A solid trademark registration can make the difference between an investment that increases over time for its owner rather than one that is nothing more than a money pit. Many believe that the process of filing a trademark is simple and straightforward – plug and chug. However, in my experience, picking up the pieces of a rejected application often leads the applicant to sour to the whole government process unnecessarily.
Careful examination of the applicant’s goals in terms of breadth of protection, enforcement opportunities or “policing” responsibilities should take place before clicking “submit”. The consequences, and there are always consequences, of an apparent initial cost savings incurred by avoiding retaining the services of a proficient trademark attorney who considers the ramifications of a well-worded identification of goods and/or services and the benefits of certain filing bases is ultimately lost once the applications hits the examining attorney's desk and is rejected. At that point, there may be no resuscitating the application and even if something can be salvaged for protection, the breadth of protection may be so narrow that the applicant is left wondering what it was all for in the first place.
A trademark registration may be useful for defensive purposes only. In other words, just to keep others from legitimately claiming that the registrant is an infringer. A trademark registration may be useful for so much more. Consideration of issues such as whether to claim color or have a design registered in black and white, claim a special font or use plain block lettering, or how to describe the goods and/or services to accurately cover the spectrum of the business are just a few examples of an experienced trademark attorney adds significant value to the initial filing process. Lesson to be learned: Once the application is filed, changes can be made only to narrow or clarify what is covered and not to broaden it; that would require a whole new filing.