Traps for the Unwary (Part Four) – Trademark Filing Firms
If you want to file a federal trademark application, you may find yourself looking at third-party providers (e.g., law firms and filing firms) and making cost comparisons so that you can file as economically as possible. Be aware that any pricing that seems too good to be true may very well be.
Make sure a U.S.-qualified attorney is assisting you:
If the filing firm has no attorneys on staff, and the firm represents that they have agents or specialists that can assist you, provide legal advice, and represent you at the USPTO… walk away. Only U.S. licensed attorneys can give legal advice or represent you at the USPTO. Agents and specialists are not U.S. licensed attorneys.
Signs that you are working with a legitimate firm:
You work with an attorney who first runs a conflict check to make sure they have no other clients whose interests may conflict with yours. The attorney explains to you what services will be provided to you, the fees associated with those services, and any fees charged by the USPTO.
The attorney communicates and works directly with you on drafting and submitting your trademark filing. The attorney either personally signs your filing for you as your legal representative or has you sign it. (No one else can sign your trademark filing whatever they say to the contrary.)
What can happen if you use a disreputable filing firm:
If the USPTO examines the firm and finds them to be in violation, their access to the USPTO may be terminated, filed documents struck, and filings terminated, and you may be severely delayed in obtaining your registration or have to start again from square one.
You may also find yourself with an application for a mark that has not been properly vetted – e.g., one that is confusingly similar to a mark that is already registered or generic or merely descriptive and unprotectable.
You could also find yourself with an application that is procedurally or substantively deficient.
Once the application is filed and the application fee secured, the firm’s communications to you may drop off, and you may not receive sufficient follow-up and assistance in the trademark application prosecution process, which can be complex. This can result in an inadvertently refused or abandoned application.
The filing made on your behalf could also contain fraudulent or false statements and information, impermissible signatures, and suspicious specimens of use (more on that in a later article). This puts your application in jeopardy of failing the USPTO’s examination and cancellation proceedings filed by third parties.
So, once again – do your due diligence and make sure you know who you are dealing with and that they are above board.