The question posed by the title of this post is a little facetious, since the federal Patent and Trademark Office (PTO) has an excellent online filing system that has simplified the mechanics of filing trademark applications via the Internet. So theoretically, anyone can file a trademark application with the PTO. But just because any person or business can file a trademark application online does not mean they should file their own trademark application.
On the contrary, the legal issues that underlie an application for a federal trademark registration can be quite complicated and can require a detailed knowledge of trademark law and procedure. So, before you decide that filing a trademark application simply is a matter of filling in a few blanks in the PTO’s online system, see if you understand and can address the following issues:
1. The PTO’s online trademark application process provides for the filing of a TEAS application or a TEAS-Plus application (which is $50 cheaper than the regular TEAS application). Do you know what these forms mean and what you need to do to qualify for use of the TEAS-Plus form? Do you know what rights you may give up if you use the TEAS-Plus form instead of the TEAS form?
2. You have to specify what kind of mark you are applying for – a standard character mark or a special form mark? Do you know which type of trademark you have? Do you know why it might be preferable to file for one form of mark or another?
3. The design or logo you are using as a trademark is in color. Do you know whether you must file for registration of a color mark and, if yes, how to do it. Do you know when and why it might be preferable to seek registration for a black & white mark instead of a color mark?
4. The trademark laws allow for registration on an “actual use” basis or an “intent to use” basis? Do you know the difference between the two? Do you know what kind of use is required to file an “actual use” application? Do you know what the date of first use means/is?
5. You must provide a specimen of use in connection with filing an actual use application. Do you know what kind of specimen you must submit? Do you know what to do if the PTO rejects your specimen?
6. Trademarks are registered according to “International Class.” Do you know what this means? Do you know how to figure out what International Class covers your trademark. Do you know what to do if the goods or services sold using your trademark fall into different classes? What if you started using the trademark with different goods or services on different dates?
The foregoing is just a short list of some of the issues that have to be addressed in filing a federal trademark application – and this list doesn’t even touch on what happens when the PTO sends a written communication (called an “office action”) that identifies possible problems with your applications.
To paraphrase a well-known saying, if you think filing a trademark application is easy and is something you can do yourself, then you don’t know what you don’t know. The bottom line is that trademarks are too valuable for a person or business to screw up the application in order to save a few hundred dollars by trying to do it themselves. We accordingly highly recommend you consult with an experienced trademark professional if you have a trademark for which you want to pursue registration.