Poster of a character showing the feeling of confusedYou have a great business and a terrific product or service and now you want to develop your brand and reap the rewards of a successful business.  You understand that protecting your brand is important but you don’t want to deal with the expense and hassle of attorneys or trademark filing services. After visiting the U.S. Patent and Trademark Office (PTO) you discover that filing a trademark application is as simple as filing an online form.  Wow, why do people hire attorneys to do this?  So you muddle through the trademark application, pay hundreds of dollars in filing fees, wait a few months, and then receive the dreaded “Office Action.”  Is this the end of the line?  Have I wasted all that money and time?  How am I going to protect my brand?

If this sounds familiar, you’re not alone.  We’ve been monitoring PTO trademark applications filed by individuals – not by attorneys or by corporations –  for months.  It’s astonishing how many applications are returned or rejected because the applicants don’t have a clue about what qualifies as a registerable trademark.  The trademark application process is deceptively simple and paved with land mines for the unwary.

Let’s take an example.  One of the most common reasons for Office Actions are because the applied for trademarks are “descriptive.”  You may ask why.  Isn’t a good trademark descriptive of your goods and services?  Actually, no, descriptive trademarks are considered weak trademarks.  Here’s an example: Say you wish to register HAIR CUTTERS to identify your new hair styling salon so you file a trademark application.  To your disappointment, the PTO refuses to register your trademark because the mark is descriptive of the services that you intend to provide. Instead, it offers you the option to register it on the Supplemental Register.  Why?  Because descriptive marks are not registrable in the Principal Register.  What’s the “Supplemental Register?” For that matter, what’s the “Principal Register?”  If your trademark is registered in the Supplemental Register, the law provides that when it acquires distinctiveness it may qualify for the Principal Register. You may wonder how a descriptive trademark acquires distinctiveness.   That’s when in the minds of the public the primary significance of your trademark or service mark is to identify the source of the product or service rather than the product or service itself.  This is also called “secondary meaning.” See it’s getting very complicated and this is only one issue of many that could affect your trademark application.

In the long run, it’s usually more cost effective to obtain legal device before you waste your money trying to negotiate the mine field yourself.  If you still have doubts, here’s a great article on the subject by a non-lawyer.

— Adam G. Garson, Esq.