DIY Correspondence With the USPTO

By David Faux
Due predominantly to technology advances over the past few decades-the computer and Internet, above all-consumers of legal services have become more sophisticated in determining exactly what they need from an attorney. Moreover, there is much more legal information available to the general public. Therefore, more and more lay people are representing themselves in their own matters, whether it be setting up a corporation, registering a copyright, or even litigating.

In my opinion, this is a mistake. Most first-year attorneys know just enough law to cause a lot of trouble for themselves and their clients, regardless of the underlying legal matter. Sure, that first-year attorney will likely work his way out of that trouble, but it can be a long rollercoaster ride, and somebody will have to pay for it. The level of trouble caused can be increased exponentially with a lay person who has never attended so much as a day of law school.

Regardless of my opinion, this is the world we live in. It is your right as a United States citizen to represent yourself on your own matters before any governmental body. Of course, it is also your responsibility should anything go wrong. You will not be able to claim ignorance to the court. That might find you some wiggle room in motion practice, but never works with more serious matters, such as securities, patent, trademark, and contracts. Again, think long and hard about what you are "saving" or otherwise "getting" in exchange for representing yourself on a serious legal matter. And follow the advice that I received as a first-year associate from one of the most senior partners of the firm: he looked at me with a fatherly smile and said, "Whatever else you might do, don't mess it up."

II.Correspondence with the USPTO

When dealing with the United States Patent and Trademark Office (the "USPTO") about registering your trademark, it may be difficult to know what is expected of you. The good news is that you are not unique: everything you are attempting has already been accomplished (or restricted) hundreds or thousands of times before this moment. Hence, for every question you have about a characteristic of your trademark, there are a multitude of marks with that same characteristic.

A.Registering A Composite Mark

For example, an applicant to the USPTO may have a composite mark that incorporates words in stylized font (the brand name) with a graphic and sometimes a slogan to be used on a variety of classes, such as pants, collared shirts, and t-shirts. With so many elements, the applicant might only fit the words in stylized font on the hangtag of all three items, the graphic on the front of the collared shirt (e.g., Lacoste's crocodile), and all the elements on the front of the t-shirts. So the applicant wants to know whether to file one or more applications with the USPTO.

The first step is to brainstorm marks that have these elements of a brand name, graphic, and slogan. This may take a lay person a long time to perform the research through Google, going through one's closet, watching television commercials, or whathaveyou. But keep in mind that these characteristics are not particular to clothing. One relevant mark would be RINGLING BROS. BARNUM AND BAILEY CIRCUS, which has the "globe" graphic and the slogan, "The Greatest Show on Earth." Another mark would be BUDWEISER, which has the eagle emblem with the slogan, "King of Beers."

Once you have thought of an established mark that shares your situation, go to www.uspto.gov, "Search Marks," and perform a "New User Search Form" for that mark. Make sure you view only the "Live" results, so that you do not unwittingly repeat a mistake from a mark that is "Dead" because it did something wrong in the application process.

Once at the mark's page, you will see four cells across the top labeled "TARR Status," "ASSIGN Status," "TDR," and "TTAB Status." Click on "TDR," which stands for "Trademark Document Retrieval." Once there, you can look through the applications, specimens, and all correspondence.

Of course, because you are viewing how an established company prosecuted their application, it will seem that they spared no expense. For instance, Ringling Bros. has several marks: the stylized brand name, the graphic, and the slogan; just the slogan; just the brand name; the graphic and the slogan; etc. Each mark cost them a minimum of $275 in government fees, plus what they spent in legal fees.

Assuming money is an object for you, you may want to file one mark with all the elements. If a competitor starts using one of the elements, you may have a cause of action for infringement. Alternatively, you may want to file the word mark as your primary brand indicator upon which to build. But this depends on too many factors that are particular to your situation. Giving specific advice in a general article like this is a "one-size-fits-none" prospect. Stating, "All start-up companies looking to save money on trademark applications should feel comfortable filing x," is too risky for an attorney. Such a statement is simply untrue for a significant percentage of businesses. This is why attorneys have that annoying habit of responding to such questions with, "It depends. Here's my card if you want to call me and talk about it." It might be annoying, but it is the best advice a responsible lawyer can give.

B.Opposing a Registration and Other More Complicated Matters

Such research may work for more complicated trademark issues, as well. Naturally, the more involved the issue, the more involved the research.With something like an opposition to a trademark, you could easily spend hours upon hours looking in the TDR sections of a multitude of marks before finding anything remotely useful.

In these situations, you should remember that the USPTO probably has some guidelines or even sample forms for you to use. A case in point arises when you wish to oppose a registration. Here, you would want to poke around the USPTO website to see if anything is on point. This should lead you to "File Forms Online." After looking through all the forms available to see which are most applicable, you should arrive at "Letter of Protest" under "Petition Forms." This should get you going.

Finally, as frustrating as it might be, you can always call the government directly. The people at the USPTO are actually quite friendly, albeit overworked. Expect to be on the phone for a while.

As to the specifics of what to put into the correspondence to the USPTO and what evidence to include for your opposition... well, it depends.

III.Conclusion

It always sounds a bit disingenuous for an attorney to say, "You need an attorney." As they say, to a hammer, every problem looks like a nail. However, the reason there are attorneys that do only trademark is because there are very sophisticated issues at every stage of the trademark application process.

Surely, you can blast something off to the USPTO and hope for the best. But a good attorney will be able to collect the entire universe of significant facts about your personal and specific situation. These facts will be used to make sure that you do not do too little to protect your mark.

Also, with trademark, you have to be careful not to do too much, either. For example, when filing a TEAS Plus application, you might be tempted to select all the options given under a specific International Class. However, claiming items under an International Class for which you are not engaged in commerce can void your entire application, even years after you have established exclusive use. Therefore, proceed carefully.