It may sound strange for a trademark lawyer to recommend against filing a trademark application, but there are several instances when it may not be warranted.
Here are my top five reasons NOT to file:
1. You haven't searched the availability of the mark first
Filing without searching can be a surefire way to get into trouble. It's like driving down a dark alley without any headlights. You may not know about problems until the examiner in the U.S. Patent and Trademark Office (USPTO) cites a prior registration as an obstacle. Even if your application issues to registration, third parties still have another five years to petition for cancellation based upon their priority. So it's better to search and learn about potential blocking marks before deciding whether to spend the time and money to file an application. An initial screening search may be done at on the USPTO website. But consult with your trademark attorney about fully searching a new trademark before starting to use it.
2. Filing may prompt an unwarranted objection
Trademark applications are a matter of public record. Many sophisticated trademark owners order watching services for their more important marks. These watching services, offered by companies by Thomson Reuters, CT Corsearch and CSC Nameprotect, give their customers early warning and advise them when a confusing similar mark is published. However, if you hadn't filed the application, the earlier trademark owner may never have known about your use of the mark. Sometimes it is best to fly under the radar and use the mark without applying for registration and unnecessarily giving others a heads up.
3. The mark is too descriptive for registration
The USPTO will refuse registration of a mark that merely describes an ingredient, quality, characteristic, function, feature, purpose or use of the goods or services covered by an application. Inherent registerability is something that a seasoned trademark lawyer should be able to spot before filing. When a client expresses interest in applying to register a mark that may be refused on mere descriptiveness ground, the reputable trademark lawyer should advise that it may be prudent to choose a more distinctive mark.
4. The anticipated lifespan of the mark is short lived
The earliest that one can expect a registration to issue is about six months from filing. If the USPTO examiner raises any objection to registration, or if the mark is not yet in use, it can take far longer. If the intended use of the mark is limited in duration, there may not be much value in spending the resources to file an application. Although registration provides many important benefits, the trademark owner who does not intend to use the mark for the long haul may just want to rely upon their “common law rights” which come from using the mark in the sale or provision of goods or services.
5. The trademark owner already owns a similar registration
It is not necessary to register a mark for everything under the sun. In the U.S., the “related goods” doctrine should protect the mark for those goods and services which are closely related to ones already covered by an existing registration. For example, if a trademark owner already owns a registration of a mark for T-shirts, it may not worth filing a new application to register the mark for pants. If a third party started selling pants under the same mark, it would likely be considered trademark infringement because consumers would expect the goods to come from the same source.
There are other instances beside the above where applying for trademark registration may not be necessary or advisable. On the other hand, there are many cases where it is prudent to file an application in order to maximize the value of the brand and to minimize the risk of conflict with others. In most cases, a good trademark lawyer should be able to provide you with the pros and cons associated with each approach so that you can make an informed decision as to how to proceed.
OPEN Cardmember Peter Sloane is a Partner of Leason Ellis LLP, an intellectual property law firm in White Plains, New York.