Should a Trademark Attorney be Required for Trademark Applications?
Across Intellectual Property Offices (IPOs) globally, different regulations, systems and practices mean that at least a passing familiarity with that region is helpful in terms of successful trademark registration. In the EU, for example, it is a requirement that the representative who files the application to register a trademark has an EU address. That representative does not have to be a trademark attorney although if your application encounters difficulty, one will be required to manage certain issues.
It has been widely reported that the USPTO is considering a move whereby all applications to register a trademark from overseas will require the assistance of a US trademark attorney. Applications received through the Madrid system will be unaffected. Domestic applications currently do not mandate the services of a trademark attorney unless, in a similar way to the EU, your application experiences problems that will require the services of a lawyer and it is not currently presumed that these will be affected.
The question then arises as to whether it is useful to consider the potential benefits of either requiring or incentivising the services of a trademark attorney at the application stage for all applications, domestic and foreign.
It’s an interesting proposition in several respects:
The volume of trademark applications globally is increasing steadily year on year with some regions proving more consistently popular than others. The US is high on the list of desirable regions for foreign applicants and in more recent times, large volumes of applications from China have been reportedly problematic in terms of both quantity and quality of application.
However, domestic applications in many regions are rising too and a significant proportion of these will be from individuals who are new to the trademark world. First office actions are common in every IPO and while it is uncertain what percentage of these can be attributed to a lack of experience, it is likely fair to predict that it is a significant portion.
It is widely known across the industry that there are challenges associated with the general public perception of trademarks, the value placed on maintaining and protecting IP in some departments within the business environment and seeing the need for legal services in association with trademarks in general.
Client education has been a hot topic for years but have we really made that much progress? And are we going to? As the exchange of information on Social Media and the internet speeds up, it becomes ever more clear that misunderstandings and the things that people wish to believe travel faster than accurate but nonetheless less attractive information. Would the necessary or incentivised involvement of trademark attorneys assist where other initiatives have struggled?
The profile of those affected:
Within most large organisations, specialist in-house staff already manage their trademark portfolios. In smaller companies or those without the need for in-house expertise, outside counsel is already in place. For these companies already using trademark attorneys, whether in-house or private practice, the impact of any such change is likely minimal.
Those most affected by such a proposal are then arguably the applicants who need professional advice the most - start-ups, small or young companies and overseas applicants with little to no familiarity with domestic systems.
Many IPOs have struggled with an onslaught of scams whereby individuals applying to register a trademark receive official looking invoices. These invoices generally seek payment for including the trademark in a directory of some sort and strive to give the impression that this service is a natural or mandatory part of the process.
Requiring the services of a trademark attorney would eliminate much of the risk from these ‘invoice scams’ along with dealing with fraudulent or suspect filings from overseas and complaints regarding ‘cheap’ trademark services. It is likely that many existing or potential trademark owners would save significant sums of money although it is unclear whether this would be widely understood!
Demand around the world to speed up the process of registration is distinct and growing. Business needs are challenged by long registration times in fast moving markets. While trademark attorneys are still human and some level of error will still be present, one would anticipate that this would be reduced by a substantial degree.
Almost every IPO is investing in reducing the time from application to registration to one degree or another but the fruits of those efforts will be limited for as long as each office is contending with applications that are improperly prepared, insufficient, inaccurate as to goods and services or a host of other issues that could be resolved by retaining the services of a trademark attorney.
You can see the current progress of IPOs in reducing their time frames in our ebook - “Essential Timing - Assessing International Trademark Processing Times”