A potential client once called me to ask me some questions about federally registering his trademark. After speaking with him about the US trademark search and trademark registration process, he asked me whether I offer a guarantee that his trademark application would eventually become a trademark registration. When I told him that I couldn’t provide such an assurance, he seemed pretty shocked. After all, why would a trademark registration attorney like myself advise someone to file a trademark application if there was a chance it wouldn’t be accepted by the United States Patent and Trademark Office (USPTO)?
Can a Trademark Registration Attorney Guarantee Success?
The fact is that while a skilled and experienced trademark registration attorney will certainly provide you with an informed opinion as to whether your trademark application is likely to mature into a trademark registration, there are simply too many variables in the trademark registration process for any trademark lawyer to offer an iron-clad guarantee of registration.
Trademark Law is Subjective
The primary reason why a trademark registration attorney can’t say for certain whether your trademark will be approved for registration is because trademark law is highly subjective. For instance, reasonable minds can differ as to whether there is a likelihood of confusion between your trademark and another trademark registered by someone else. Or, there can be a legitimate argument as to whether your trademark is merely descriptive (not eligible for federal registration) or suggestive (eligible for federal registration). Perhaps there’s a genuine question as to whether your trademark would fall into a category of trademarks that aren’t eligible for registration under any circumstances. So, even though a trademark attorney may have honestly believed that your trademark would be approved for registration after conducting a federal trademark search and fully evaluating your trademark and any other information provided by you, there remains the possibility that the examining attorney assigned to review your trademark application might have a different opinion and could reject your trademark application on one or more grounds.
Your Trademark Application Might Be Challenged
Another reason why a trademark registration attorney can’t offer a guarantee of federal registration is because there’s always the chance that your trademark application will be challenged by somebody during the 30-day trademark opposition period. Should that happen, you may choose to voluntarily abandon your trademark application rather than spend a significant amount of time and money defending against the opposition. Even if you decide to defend the opposition, the eventual ruling by the Trademark Trial and Appeal Board (TTAB) may not be in your favor, which would lead to your trademark application going abandoned. Of course, it’s completely outside a trademark attorney’s control whether an opposition is filed against your application and how you ultimately opt to deal with the opposition.
You Need to Use Your Trademark
Finally, if your trademark isn’t in use in commerce at the time your trademark application is filed, you will eventually have to use your trademark and file the Statement of Use before the USPTO will issue your trademark registration. Needless to say, it’s solely your responsibility to properly use your trademark in connection with the advertising and sale of the products or services listed in your trademark application. If you don’t use your trademark and file the Statement of Use by the deadline, your trademark application will go abandoned through no fault of the trademark registration attorney.
An Honest Trademark Registration Attorney Doesn’t Make Guarantees
The bottom line is that there are no guarantees when it comes to federal trademark registration, and if you come across a trademark registration attorney who promises you that your trademark will be approved for registration, you should run away as fast as you can.
I’m experienced US trademark attorney Morris Turek. If you would like to speak with an honest and trustworthy trademark attorney who won’t make empty promises, please don’t hesitate to call me at (314) 749-4059, send me an email at firstname.lastname@example.org, or just fill out my contact form at the bottom of this page. I look forward to hearing from you soon.
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