The deceptively simple process of “trademarking”

James Major of Hitlab

Somewhere, some time — I think, perhaps, it was in my contribution to this work, actually — I noted that with the advent of online trademark registrations, it has become deceptively easy to think anyone — just anyone! — can register a trademark.  Later I held forth more boldly, and for free, in this space on the perils of do-it-yourself trademark applicating.  Did it scare anyone off?  I hope so, but I doubt it.

Now, however, I think I have been bested or, at the very least, quite a bit bettered by this post by James Major on Patently-O entitled Pitfalls in Trademark Prosecution, who may just have scared me off, though at least James agrees with me on one point:  It’s become too easy to think you’re doing it right.  His introductory paragraph:

In a post entitled “Trademark: Registration Void if Completed Prior to Actually Rendering Services in Commerce,” Prof. Crouch asserted that “[o]ne of the traditional benefits of trademark law is that it has fewer disastrous pitfalls for the uninformed (as compared with patent law).”[1]  This guest post respectfully disagrees with Prof. Crouch and asserts that trademark law contains administrative traps for the unwary not commonly found in patent law.

Of course, a patent prosecutor and a trademark attorney can each make substantive and procedural errors; creating an estoppel and blowing a deadline, respectively, are just two.  But, substantive and procedural errors are hardly unique to patent and trademark law.  This post argues that there is the possibility of what I will call “administrative” errors that are unique to trademark law. These administrative errors arise partly because of the ease of submitting documents to the United States Patent and Trademark Office (the “USPTO”) through the Trademark Electronic Application System (“TEAS”),[2] and partly because of the fundamentals of U.S. trademark law.

The piece goes on to delineate a number of “pitfalls” for lawyers filing applications to register (not “to trademark,” of course) or assign trademarks and to examine them in turn, specifically:

  1. The risk of making inadvertent factual assertions which may not turn out to be based on the attorney’s actual knowledge;
  2. Improvident use of the U.S. Acceptable Identification of Goods and Services Manual, which can seem like a smashingly good idea at the time;
  3. In assigning and filing assignments of trademarks, erroneously separating the mark from the axiomatically attendant goodwill; and
  4. Purporting to assign an intent-to-use “trademark.”

If you’re a trademark pro who’s going to San Diego next week to meet and eat with the elite of the trademark-applyin’ crowd, you might want to check your workspace over the next few days to make sure you haven’t stepped into any of those pitfalls.  Do this and you can enjoy the sunny weather and sparkling company in good conscience without any need to put any carriers on notice or anything like that.

Oh, and thanks to James Major for reminding those patent lawyers that it’s not all fun and games doing “soft IP” — just a lot more fun and games than what they do.


By Ron Coleman

I write this blog.