The following is an edited transcript of my video Trademark Applications: What You See vs. What You Don’t.
I’ve always been intrigued and fascinated by great magicians – I love watching Penn & Teller for example. I’ve been to several magic shows over the course of my lifetime and I remember vividly going to my first magic show at a birthday party when I was around 10 years old, and the wonder of what’s behind the curtain, how they make things appear, and what’s hidden, or is there but you can’t actually see it. There’s an analogy with trademark applications, because when you look at the record for a trademark application, there’s a lot of information – who owns it, what the goods and services are, what the relevant dates are, what the relevant numbers are and those kind of things.
But, there’s a lot behind the curtain—behind the scenes—that you can’t necessarily see just from looking at those records. What do I mean by that? What I mean is that for every trademark that got developed and applied for, someone or some business had to choose a creative name. That was an important step that happened before the application ever began. Also, presumably there was a search conducted – a search of the USPTO almost certainly, hopefully a search even beyond that of all types of records – a comprehensive search. Again, you don’t see that in the application, you don’t see the effort to search and clear the mark to find out about what might be out there that could be a risk or something to consider as a potential obstacle.
You also don’t see when you’re looking at that application record all the strategic decisions that one should make when they’re processing and building and filing a trademark application. Strategic decisions about choosing the wording for the goods and services, filing based on use in commerce or intent to use, or even on the basis of a foreign filing all of these things that take place behind the curtain.
You don’t see the guidance that an applicant may be getting from experienced counsel. You can see whether or not an applicant has counsel, but you’re not privy to those conversations and that guidance that’s taken place, that’s helped craft the application and get it to the point where you see those records in the USPTO database.
And finally, what you’re not seeing much of the time is software that’s helping an applicant or a law firm to manage the application, mostly to track it, to docket it, to check the status, to ensure that the USPTO was handling it in the right timely fashion, to be able to know what division, what department it’s in at the USPTO, and to be able to get updates as it moves throughout the phase as quickly as possible. That software is another thing that law firms like ours can use that operates behind the scenes, but helps the entire application process.
It isn’t magic to apply for and get a trademark application. There are real concrete things, many of which I’ve talked about or written about in my book or on my blog and website. The magic is following advice and understanding that all those things behind the scenes—behind the curtain—are just as important, if not sometimes more important, than what’s in front of the curtain. It really isn’t magic, but it is time, energy, effort, and hopefully experienced council.