Stretching Your Practice: Electronic Searching and Filing of Trademarks

Most business or general attorneys regard intellectual property (IP) as an enigma. This is especially true when it comes to patent practice. After all, there is a separate “patent bar” required for representing patent applicants in the U.S. Patent & Trademark Office (“PTO”). By contrast, a trademark applicant can be represented by any lawyer. Accordingly, all lawyers can potentially file trademark applications. For those who want to venture into trademark law, and in particular for those who want to perform trademark searches and/or file trademark applications, I am writing this article to help you spot important issues before it is too late. Due to the Internet, filing trademark applications can be a fairly simple matter, especially once you have done one or two. This is especially true for trademark applications because the PTO recently created a system called TEAS (Trademark Electronic Application System), which enables preparing and filing applications via the Internet. In fact, to encourage electronic filing, effective June 24, 2003, if you file a trademark application by express mail (the current typical manner), you will no longer get the benefit of the date of deposit in express mail as the filing date. The PTO will only give you the date of actual receipt.

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