Lexoo's CEO Daniel was recently asked by a friend "Can I register my own trademark without a lawyer?", and what the risks are for doing so. Daniel decided to ask Jerry Bridge-Butler (one of Lexoo's trademark lawyers) what his answer would be. The following page is Jerry's answer:
A trademark lawyer is not just there to file trademark applications. They are important business advisers who help a company navigate through all kinds of issues with the use and registration of their branding. Without taking the advice of a trademark lawyer any business can get into very serious trouble very quickly. I spend most of my time as a trademark lawyer helping businesses with these issues, either pre-emptively avoiding them or helping to resolve them.
The process of choosing and then registering a trademark is beset with potential risks, and the advice that a trademark attorney will provide to mitigate or avoid those risks is crucial. I have lost count of the number of enquiries I have picked up on Lexoo which involve someone having filed a trademark application and then got into a legal dispute with someone who had registered a similar trademark earlier, or which involve someone using a trademark but being accused of trademark infringement.
When a client comes to me asking me to file a trademark application, I don’t just do what they ask. I will first consider the inherent registerability of the proposed brand, and then perform some searching to try to assess the likelihood of an issue with an existing rights holder, both in terms of them trying to prevent the mark being registered, and suing for infringement of their rights. In 99% of cases there are earlier rights to consider, and risks to asses. The client is then in a position to make an informed decision about how to proceed. Quite often they end up changing their proposed branding to avoid issues.
Anyone who just chooses a new brand name in a vacuum, and then begins using it and/or just files their own trademark application for it is asking for trouble. And the trouble they can get themselves into can be very serious.
On top of these general commercial considerations, when it comes to the application itself while it might appear simple it can be far from it. Firstly, there is the question of what to apply to register. A trademark can be registered in all kinds of different ways, with advantages and disadvantages to each approach. Would an unrepresented applicant know the difference between a word-only application and a device mark application for instance? I have seen countless applications filed by unrepresented applicants which gave them completely the wrong rights.
Secondly, there are the goods and services to cover. This element of a trademark application is nowhere near as simple as it seems. If someone wants to use a brand to just sell shoes, then the process is fairly obvious. However, the existing classification system is very awkward to use when someone wants to launch a business which involves an app, an online platform, some retailing and some business services. You need to be very experienced with the classification system to know how best to properly cover all that. I have also lost count of the number of times I have been asked to help someone who has already filed an application with all the wrong goods and services in it. There are some very easy mistakes you can make.
If there are any issues with the application, such as an examiner objection or a third party opposition, then the work required to deal with that is far beyond the layman. This is what a trademark lawyer is qualified to handle, and a good one will be able to resolve the matter for their client quickly and efficiently. This is not just a directly legal area, as a lot of the time it also involves striking settlement deals with earlier rights holders. Only an experienced lawyer will know what kind of thing will work, and how to get their client the best result. There is a lot of bravado from earlier rights holders, and it can be daunting to deal with without an experienced representative.
Over and above all this, I also spend a lot of my time managing the trademark portfolios of my clients and acting as the central hub for overseas applications. Some of our clients have hundreds of foreign registrations, all of which were obtained via ourselves or via our international network of associate agents. This network has taken decades to establish, and the working relationships with have with our foreign agents is very beneficial for our clients. I work so closely with my US agent for instance that he often performs work for my clients free of charge if there are difficult issues to deal with. He can only do this because of the volume of work I send to him. If an unrepresented company went to him directly he would not work for them in this way.
In addition, a trademark lawyer will also handle enforcement of rights, and deal with infringement threats. How would someone who had filed their trademark application themselves prepare and send a cease and desist letter for instance, or approach a trademark applicant to demand that their conflicting application be withdrawn or amended? How would they deal with a letter sent to them threatening them with an infringement action? These are all things which the trademark lawyer will deal with.
A trademark lawyer can also handle assignments of rights, and help to negotiate and establish trademark licences. They also handle renewals of rights and deal with notices issued by IP offices.
I have one final thought for those considering proceeding on their own, and that is the value of having the trademark lawyer listed on the trademarks register as the appointed representative. This is actually very important because it acts as a warning to others that the trademark owner needs to be taken seriously. It is a rather unfortunate fact that when I am looking at earlier rights for my clients, whenever I come across one where there is no appointed representative I tend to advise my clients that they can ignore it because the owner does not need to be taken seriously. After all, if they can’t afford a lawyer, then they are not going to be able to afford to oppose a new application or know how to do so. I wonder whether people who file their own applications are even aware that their rights are generally given little consideration by others, and therefore it is far more likely that others will seek similar rights and cause them all kinds of problems.
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