Should we encourage cost-conscious enquirers to file a trade mark application themselves?

It may sound counterintuitive to suggest that we shouldn’t discourage cost-conscious potential clients from filing their own trade mark applications. We would lose revenues by doing so, wouldn’t we? But on the flip side, we will win their trust, especially if we give them some pointers to valuable information that can support them in filing their new trade mark application. They then will feel reassured enough to come back to us should they run into a problem or for more complex applications.

Filing a trade mark is easy

At least it looks easy.

Many Intellectual Property Offices have a website which allows simple online filing. Those Intellectual Property Offices which don’t support online filing will at least allow trade mark filing via fax.

The main Offices are:

Unfortunately, whilst the self-filing option for non-practitioners may seem straightforward on the surface, it rarely is. In fact it always reminds me of the famous comedy sketch “Mr. Bean at the Dentist”. After a catalogue of errors, the dentist passes out and Mr Bean takes the drill into his own hands and drills four holes when only one was required…

What are the possible issues with self-filing, and their consequences?

Issues with self-filing by non-experts that I have seen often since 1993 include:

  • Foreseeable rejections by the Patent and Trade Mark Office
  • Difficulties with the trade mark prosecution process, because of incorrect wording on the list of goods and services, often “solved” by self-filers inadvertently including disclaimers which then unnecessarily limit the scope of protection
  • Foreseeable conflicts with earlier rights: when an applicant files without having carried out an earlier rights search and wrongly believes that the Patent and Trade Mark Office has endorsed using his trade mark by registering it
  • Applicant files a trade mark application in the wrong class of goods or services, such as a trade mark in class 35 for “advertising” services, because he conducts advertising of his actual products or services (which fall in a different class) as part of his marketing strategy.
  • Trade mark application is filed under the wrong applicant name
  • Trade mark as used and trade mark as filed are different.

And many more.

Value of IP professionals for trade mark applications

Self-filers often end up spending more money to pay an IP attorney (or two, or three) to fix their trade mark application when it’s gone wrong, or even to re-file it, than it would have cost to hire an experienced IP attorney to file the application for them in the first place.

A registered trade mark provides the trade mark owner with significant protection for their intellectual property, thereby establishing a business asset. Establishing proper protection of the business asset by using a qualified IP attorney adds value to the business.

Trade marks are important because they guarantee the identity of the origin of the trade-marked products (or services) to the consumers or ultimate users, by enabling them without any possibility of confusion to distinguish them from products or services which have another origin.. The trade mark owner, if he or she has protected their trade mark correctly, has associated their goods or services with a particular level of quality, and usually works hard to maintain this level of quality. In other words: if a trade mark owner does not protect their trade mark properly, they open themselves up to the danger of inferior quality goods or services being distributed under the same or a similar name.

It is not only important to protect a trade mark, but it is even more important to file the application properly so that the registered trade mark gives proper protection. Unfortunately, believing that the Patent and Trade Mark Office will guide and help the applicant through the trade mark registration process is as unrealistic as thinking that tax authorities will help a specific taxpayer to reduce the taxes they owe.

Applicants need to remember that it is not the job of a Patent and Trade Mark Office to help an applicant to get the best and most appropriate trade mark protection, but to examine the application that has been submitted. Very often, a suggestion or a request made by the Patent and Trade Mark Office only serves to make the work of the Trade Mark Examiner handling the file easier; it does not mean that it is best, or even preferable for the applicant.

Conclusion

Hiring an IP attorney to file a trade mark application is not overly expensive, and is a good way to ensure that a trade mark is properly filed and prosecuted through to ultimate registration.

The small amount of money applicants could ‘save’ by representing themselves in trade mark filings should always be compared with the investment in business cards, letterhead, advertisements, signs, brochures and their reputation, which could all be lost by a wrongly filed trade mark application.

Next steps

  • Prepare an information leaflet for cost-conscious new enquirers, with links to webpages that help them file their own trade mark applications. Include a link to this blog in the leaflet, as a warning!
  • Consider getting involved with FICPI’s Study & Work Commission on trade marks (CET 1).

How FICPI makes IP attorneys more effective

Independent IP attorneys help organisations protect and build value in their IP assets by helping them obtain meaningful protection for their trade marks, inventions and designs, and through this to help drive the economic growth of the country and region in which they are located. Clients recognise the quality of FICPI members as independent IP attorneys demonstrating legal and professional excellence.