IP: When it comes to filing for trademarks, experience counts

A recent study highlights why companies should hire seasoned counsel

A recent University of North Carolina School of Law study demonstrated the significantly higher success rates for trademark applications handled by experienced trademark attorneys. The study has received attention in various publications and tries to quantify what most trademark attorneys know—experience matters. The study uses data from the U.S. Patent and Trademark Office (PTO) to assess the effect of experienced trademark practitioners versus others by comparing the numbers of published applications (i.e., when the PTO approves the application) and issued registrations. To take the study one step further, experienced practitioners know publication and registration are not the only barometers. These are measurable guideposts, but some published applications and registrations are not worth the paper on which they are printed or the value can be diminished by mistakes made in prosecution.

Publication and registration provide measurable data points; however, other harder to quantify barometers could include the downstream effect after publication and registration. Ask any experienced trademark attorney, and they will tell you about some common mistakes they see made by pro se applicants and inexperienced practitioners. Such errors result in significantly weaker registrations. For example, consider that while adopting the suggestions of the PTO Examining Attorney should result in approval, merely accepting these suggestions can result in unduly narrow or inappropriate descriptions of the goods/services, improper disclaimers, and the like, all of which affect the scope of protection and applicant’s valuable rights in the registration. As observed in the study, pro se applications have increased in recent years with TEAS and PTO outreach efforts to make TEAS more approachable. In theory, pro se applicants are more likely to follow the Examiner’s suggestions rather than “push back” to provide another appropriate response. Other common pitfalls include ill-advised or improper statements or amendments during prosecution, which also affect the strength and, potentially, the validity of any resulting registration. Infrequent filers are prone to such mistakes that can also result in lost filing fees and even filing dates, and some of these data points can at least be measured. Others, such as the undue complications and unduly narrow or questionable registrations, are just as real but much harder to quantify.

The harm can be felt in the value of a business. By way of illustration, many times a party acquiring a business will review a trademark portfolio including all PTO filings to assess the value of the marks. The discovery of a weak mark or potentially fatal mistake lessens the value. Other times, mistakes are not uncovered until there is a need to assert a registration, and enforcement and settlement strategies are negatively affected when there is a vulnerable or questionable registration. If you do take a registration to court, the other side will seek to exploit those mistakes and look for other weaknesses in protection. Even if a mistake is not fatal it could lessen credibility to the judge or jury, could weaken the scope of protection, and the owner could expend significant time, effort and money litigating an issue that might not have needed to be defended if the application had been handled properly from the start. Worse yet, a claim for damages for fraudulent registration could be asserted. Of course, anecdotal stories from experienced trademark attorneys can have some measure - in potentially unnecessary costs to the organization - but typically the specifics of those stories cannot be shared with others and thus are hard to quantify.   

Experienced counsel can help avoid the many pitfalls that can prove costly in the end. As with most things in life, experience counts for something and oftentimes cannot be easily measured. 

Contributing Author

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Jennifer Fraser

Jennifer Fraser is a partner and co-chair of the Novak Druce Connolly Bove + Quigg LLP’s Trademark and Copyright Section. She has been recognized as...

Additional Contributors: Christina M. Hillson

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