By: Jansen Rigney, Of Counsel, Eldridge Brooks Partners
One of the most common situations I see in my intellectual property practice is when a client comes to me after filing a trademark application on their own. Something has gone wrong, and now they need help cleaning it up.
Most self-filed trademark applications receive an Office Action from the USPTO. That part isn’t unusual. What concerns me is that many of these applications contain foundational flaws that make them difficult or impossible to fix. These aren’t just technicalities. They are structural problems with how the application was prepared in the first place.
When I do think an application is salvageable, the response required to overcome the USPTO’s rejection is often substantial. It may involve legal arguments, disclaimers, amendments, or submitting evidence. And by the time we work through it, the client ends up spending nearly as much—sometimes more—than they would have if I had filed it for them from the start.
Trademark law may look simple on the surface, but filing a strong application takes strategic thinking. You need to understand how your mark fits into the legal landscape, how it might be interpreted by an examining attorney, and what risks it may face in the marketplace.
Filing on your own might seem like a good way to save money. But in many cases, it ends up costing more time, more money, and more stress than it would have taken to do it right from the beginning.
Jansen Rigney Esq.
Steven Brooks
Conner Eldridge
Emily Neal
Cameron Brewer
Kate Sullivan
Kirk Schauer
Anne (Vibeke Helgesen)Jimenez
Daniel W. Clement
Stacey Patterson Hightower
