Read it and weep: trademark retainer agreement 3

This article continues my discussion on the attorney/client retainer agreement for a federal register mark application. The term ‘federal register’ indicates the official legal status of marks that meet requirements of the United States trademark office, and are therefore entitled to more rights than unregistered marks. The federal register does not automatically include marks on state registers, and state registers generally only provide procedural advantages to mark owners.

Clients often do not realize that filing of the application is often not the only step required to obtain registration. Instead there may be additional attorney fees and government fees depending upon (i) whether the mark is already in use, (ii) the specific visual features of the mark, and (iii) whether similar marks already enjoy federal registration status. These additional steps should be explained in the retainer agreement prior to the application process. For example, the examiner may conclude that the mark does not display the visual features required for federal registration. The client and the attorney must then either (i) file a response that explains the reasons that this mark displays the necessary features or (ii) modify the mark and file a subsequent application therefore.

If the client overcomes the rejection based upon the mark’s appearance, another frequent rejection is as follows: The mark, with its associated goods and/or services, is too confusingly similar to other marks with their goods and services on the federal register. Such a rejection requires a very comprehensive written response based upon numerous complex legal analysis, as well as affidavits and other specific written evidence. Depending upon the length and complexity of this response, the attorney fee and associated costs could be considerable.

If the client overcomes the confusingly similar mark ‘pothole,’ then there is the issue of specimens. Specimens are most often the visual images of how the mark is being used in association with the goods and services, and appropriate specimens are necessary for federal registration. For trademarks, most specimens consist of the visual images of the mark applied to the goods or products such as upon labels, embossing or engraving. Appropriate markings on containers, appropriate catalogues, point of sale displays, and properly formatted interactive websites, and even infomercials are also acceptable for trademarks associated with products. On the other hand, marks associated with services are properly displayed upon items such as business stationary, invoices or business cards, or interactive websites. If a business did not previously properly display the mark, then it must invest money in proper display to qualify for federal registration. For example, the trademark office does not generally accept advertisements displaying the logo for products and goods. For services, a mark image appropriately displayed upon an invoice is acceptable use; however, a mark’s display upon an invoice is generally not acceptable for products.

The retainer agreement should also explain that if the mark is not in use at the time of filing, then there are additional attorney and government fees for submission of an appropriate specimen after use commences. In particular, if a client requests additional time from the trademark office to place the mark in use, then the client will incur more surcharges and attorney fees, assuming the trademark office grants the request. Finally, if there has been improper displayed the symbol ®, then this oversight must be flagged in the retainer agreement and the client must invest in new packaging and business documents.

© 2012 Adrienne B. Naumann
Ms. Naumann does not sponsor or endorse the advertisements at


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