Plan ahead: the trademark retainer agreement

My last article addressed the recommended retainer agreement for prosecution of a United States utility patent application. A retainer agreement for a U.S. federal register trademark or service mark application requires many of these same generic recommendations. For example, the fees should be detailed at the beginning of the written agreement. The agreement should also explain the conditions under which fees will be returned to the client. Furthermore, these stated conditions for return of fees should comply with the requirements for return of fees by the relevant attorney licensing agency.

The agreement should also state the nature of the trademark project, the boundaries of the project, and services that are included within the project. For those of you unfamiliar, the United States federal register displays trademarks and service marks which have been reviewed by the trademark office. If they survive the review process, these marks are presumptively entitled to certain rights. These rights are in addition to those rights that mark owners already possess in the United States if their marks are consistently in use (in addition to other requirements).

Equally as important, the trademark retainer agreement must educate the client on certain trademark realities, as previously explained for the U. S. patent retainer agreement. For example, the prospective trademark applicant must understand the importance of filing the application signed by the true owner(s) of the mark. Otherwise, the application is void and cannot be corrected after it is filed. This point is important because if the application must be refiled, there is a loss of valuable time. Even more important, a third party may file ahead of the client and thereby obtain rights that supersede to those of the client. Closely related to designating the trademark owners, the retainer agreement should also advise the client to obtain releases from third persons who may claim ownership or other rights to the mark.

For the reason immediately explained above, these releases must all be signed and dated prior to the filing date of the application. I have advised clients to do so on numerous occasions although this process often requires considerable time. However, it must be done because of the consequences of overlooking this preliminary step.

The retainer agreement should also advise the potential federal register mark applicant that other persons or entities may be using the same mark. If these marks are used with similar goods and/or services, then there is a higher probability that the mark may not obtain federal register status. Consequently the retainer agreement should recommend a trademark search that includes more than a search of marks on the federal register: It should also include what are known as common law marks, as well as marks on state registers and other sources in the United States at the very minimum.

The retainer agreement should also inform that the search requires an additional fee. However, if the search is properly conducted prior to filing, the search may prevent unnecessary investment in trademark prosecution. The search may also prevent financial investment in production of inventory and business documents that displays a mark that (i) may not qualify for federal register status and/or (ii) infringes a third person’s mark.

© 2012 Adrienne B. Naumann
Ms. Naumann does not endorse or sponsor the advertisements at or at other linked-in sites.


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