I recently reviewed a listing of applied-for trademarks which demonstrate that many attorneys are clearly not providing their clients with substantive information regarding whether their marks are likely to register and why/why not. Many attorneys clearly don’t take the time to discuss the trademark process with their clients. They don’t seem to provide information regarding other marks in existence that may be cited in a refusal based upon a likelihood of confusion. They don’t seem to explain that a descriptive mark cannot be reserved using an intent to use application or that if that mark is eventually put to use, the effective date will switch to the date it is placed in use rather than the date the application is filed (and thus falling behind any later-filed marks). After seeing a number of these marks that suggest a number of people, including brewers, are being taken advantage, I write this blog out of frustration and a desire to help the industry.
Your attorney should provide you with information regarding the likelihood that your mark will register and explain what marks may provide a potential bar to registration and why. Your attorney should also provide information regarding any common law marks in existence that may create unwanted issues down the road. You should also receive counsel about whether there are other potential bars to registrations such as a generic or descriptiveness refusal or a refusal based upon disparaging, scandalous or immoral matter.
It simply isn’t worth it to pay an attorney to file an application for you that is refused because the exact same mark (or one that is similar) is already in use and registered for the same or similar goods/services. It’s disturbing how often trademark applications are filed by an attorney that will undoubtedly be refused because the exact same mark is already registered (perhaps with the addition of a descriptive term like “Ale”) is already registered for the exact same goods. This suggests that attorneys are taking advantage of clients or that clients simply don’t know what kind of service to expect from their counsel (often both).
Business owners should be able to trust their counsel. If a client (or a prospective client) asks me to file a response to a likelihood of confusion refusal that will have no shot of being withdrawn, I’m going to tell the client rather than waste their time and money and get their hopes up. If a client gets an office action requesting further information, it may take a five minute phone call with the examining attorney to take care of all issues. I would send a client screenshots showing him/her step-by-step how to appoint me as attorney for the given mark so that I can have the quick conversation with the examining attorney. I’d rather do those simple things quickly and let the brewers put their money into their business and provide paid legal services where it’s legitimately needed.
Attorneys who simply take money to file a trademark application aren’t doing the industry (I suppose two industries – that of the attorneys and of brewers) any favors. It is simply a waste of time (it will take over three months just to learn that your mark is being refused) and money (whatever fee is being charged for this seemingly lazy service is too much). Attorneys should not be used simply as some sort of filing conduit. You can file a trademark application on your own with the same lack of information and spend far less money (and only slightly more time). You should receive substantive information about what to expect and why when you pay an attorney to help you achieve trademark registration. We had a conversation at the end of last year with the Broward Palm Beach New Times and on our blog about descriptive marks early in the year regarding the case of an intent-to-use application for “MIAMI BEER COMPANY” and “Miami Brewing Company”. Miami Beer Company is a non-entity. It does not exist. It could not reserve the right to use a geographically descriptive mark. Nonetheless, even though Miami Brewing Company was already pouring its beer for consumers in its taproom and distributing its beer, the individual seeking to register MIAMI BEER COMPANY paid his attorney more money to file a response to the office action that was doomed to fail (and it failed).
If you do file your own trademark application(s), make sure that you take the time to read and review all information within the application. You must ensure that statements made within the applications are accurate or the result may be a refusal or, even if the mark registers, cancellation down the road.