Filing a trademark is easy. It might look easy to you, at least.
How is it Done?
With the Invention of the Internet, most services have been available online, and filing a trademark is no exception. Most Intellectual Property Offices have a website which allows simple online filing. Those Intellectual Property Offices who don't support online filing will at least allow a trademark filing via fax.
European Union: https://euipo.europa.eu/ohimportal/en/web/guest/apply-now
Germany: http://dpma.de/english/trade_marks/application/index.html (via fax)
United Kingdom: https://www.gov.uk/register-a-trademark
(note: the above URL's worked in April 2016, this may no longer be the case when you read this article)
This self-filing option for non-practitioners always reminds me of the famous video sketch "Mr. Bean at the Dentist". I cannot stop laughing when I see him using a drill on his own teeth, even after having seen the sketch multiple times.
You might think it is with a few clicks that you can file your own trademark. However, there are possible issues and consequences that you might not foresee when you do.
So, what are the possible issues and their consequences?
Issues that I have seen often since 1993 comprise, but are not limited to:
- foreseeable rejections from the Patent and Trademark Office,
- difficulties with the trademark prosecution process, because of wrong wording of the list of goods and services, often "solved" by inadvertently including disclaimers which limit the scope of protection,
- foreseeable conflicts with earlier rights: applicant files without having done an earlier rights search and wrongly believes that the Patent and Trademark Office has endorsed using his trademark by registering it,
- applicant files a trademark application in the wrong class, such as a trademark in class 35 for the services “advertising”, because he conducts advertising of its product or services as part of his marketing strategy.
- applicant files a trademark application under the wrong applicant,
- trademark as used and trademark as filed is different.
These self-filers end up spending more money to pay an IP lawyer to fix their trademark application, or even to re-file it, than it would have cost to hire an experienced IP lawyer to file the application for them.
I believe that self-filers are inherently negligent because they don't honor or recognize the value of a properly protected trademark. A registered trademark provides the trademark owner with significant protection for their intellectual property, thereby establishing a business asset.
Trademarks are important because they identify the source of a particular good or service, thereby distinguishing them over the goods or services of the competitors: the trademark owner, if he does it right, has associated his goods or services with a particular level of quality, and he usually works hard to maintain this level of quality. In other words: if a trademark owner does not protect his trademark properly, he may open himself up to the danger of an inferior quality good or service being distributed under the same or a similar name.
Therefore, it is not only important for to seek protection for a trademark, but it is even more important to file the application properly so that the registered trademark gives actual protection. Thinking that the Patent and Trademark Office would help the applicant through the trademark registration process is just as (non-)realistic as thinking that tax authorities would help a specific tax payer to reduce his payable taxes.
You need to remember that the job of a Patent and Trademark Office is not to help the applicant to get the best right possible trademark protection, but rather to examine the application that have been submitted. Very often, a suggestion or a request made by the Patent and Trademark Office is only good for the work of the respective Examiner but it does not mean that it is best, or even preferable for the applicant.
Hiring an IP lawyer for filing a trademark application is not overly expensive, and is a good way to ensure that your trademark is properly filed and prosecuted.
Having saved a little amount of money by representing yourself in a trademark filing should always be compared with the investment in business cards, letterhead, advertisements, signs, brochures and your good name, which could all be lost by a wrongly filed trademark application.