Trademark Searches
Users can conduct a trademark search on the USPTO website based upon different criteria such as the type of trademark (wordmark or design descriptions), the goods and services, or the owner of the trademark, among other search options. Once you input the search details, you can narrow the results by the trademark status and refine the search results by the specific types of goods/services.
Once you narrow the results to your satisfaction, you can click on each individual result to view additional information about each trademark. You will be redirected to the trademark file wrapper, where you can view the entire trademark record, including all documents that were publicly filed in connection with the application/registration. This information is helpful in understanding the status and history of any trademark registration or application. Being able to conduct a trademark search, properly narrow the results, and understand the results is valuable.
Copyright Searches
Acquaint yourself with the Copyright Office’s search functionality via the Copyright Office Official Public Catalog. You can conduct searches for copyright registrations registered in 1978 or later and within a variety of fields such as title, name, keyword, and registration number, among others.
You can also conduct searches of the Copyright Office records through the Copyright Public Records System—Pilot (CPRS). CPRS is a pilot program currently offered by the Copyright Office. It has a more powerful search engine than the Copyright Public Catalog and provides additional filtering capabilities, among other features. CPRS also includes images and some searchable metadata between 1909 and 1945.
Unlike the USPTO, the search results from the Copyright Office are limited to the specific details of the registration. You can’t view the actual protected work or documents filed in connection with the registration. To obtain documents related to a copyright registration, you must order those separately from the Copyright Office for a fee.
Trademark Filings
To file anything with the USPTO, you must have a MyUSPTO account. All trademark filings with the USPTO are conducted through the Trademark Electronic Application System (TEAS). Here is an index of all TEAS forms and a description of the purpose of each form. To view additional details about each type of form, click on the numbered headers, and you will be redirected to a brief description of each form. Many forms require payment of a fee, so be sure you understand your firm’s payment policies prior to filing any form with the USPTO.
The Trademark Manual of Examining Procedure (TMEP) governs the examination of new trademark applications. Understand the requirements and restrictions outlined in the TMEP so you can advise your clients accordingly.
Copyright Filings
To file with the Copyright Office, users must have an account with the Electronic Copyright Office (eCO) Registration System. (View the different types of works that can be registered.) Click on the specific type of work you want to register and access various resources concerning each specific work, including video tutorials and sample forms, among other resources.
Admittance to the Patent Bar
If you are involved with patent litigation, you may want to apply for admission to the Patent Bar or, at a minimum, ensure that you have the qualifications to gain admittance should it be required by your firm. Admission to the Patent Bar is a requirement to argue patent matters before the USPTO. (USPTO General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases before the United States Patent and Trademark Office (April 2024).) Familiarize yourself with these requirements to ensure you meet the qualifications to argue patent matters before the USPTO should you choose to do so.
Neutral Intellectual Property Resolution Organizations
You should also familiarize yourself with neutral organizations that assist in the resolution of intellectual property disputes.
Domain Disputes
The World Intellectual Property Office (WIPO) handles domain name dispute claims under its Uniform Domain Name Dispute Resolution Policy (UDRP). WIPO has specific rules and requirements that must be satisfied to prevail in a UDRP proceeding.
UDRP complaints can also be filed with the Alternative Dispute Resolution Forum (The Forum). The Forum’s rules and requirements differ slightly from WIPO’s. Not all infringing domains are good candidates for a UDRP proceeding, so it is essential for you to understand the different requirements so you can advise your clients accordingly.
Trademark Trial and Appeal Board
The Trademark Trial and Appeal Board (TTAB) handles appeals from examiner decisions, as well as oppositions and cancellations filed against pending and registered trademarks. The TTAB has a separate filing system called Electronic System for Trademark Trials and Appeals (ESTTA). You will have access to ESTTA through your MyUSPTO account.
Matters before the TTAB are governed by the Trademark Trial and Appeal Board Manual of Procedure (TBMP). Familiarize yourself with these rules and procedures prior to assisting with a TTAB proceeding.
International Trademark Requirements
You will likely need a very basic working knowledge of general trademark registration requirements in other geographic areas of the world to work with local counsel in those jurisdictions to create an international trademark filing and enforcement strategy on behalf of your clients. For example, the United States is a first-to-use country when it comes to trademark protection, while China is a first-to-file country. You need to be aware of these differences to best assist your client with any global trademark strategy.
The International Trademark Association (INTA) offers free resources to members, such as its Country Guides. This resource offers extensive information about foreign trademark requirements in numerous jurisdictions around the world.
Some clients will seek trademark protection in the United States and other countries worldwide, so you must familiarize yourself with the Madrid Protocol. The Madrid Protocol is an international treaty that allows trademark owners to obtain trademark registration in multiple countries based on a single application. This process can be a cost-effective option for clients.
Your First Year Doesn’t Have to Be Overwhelming
Any attorney’s first year of practice is overwhelming, but it doesn’t have to be. Take the time to familiarize yourself with the resources identified in this article, and you will set yourself up for success during your first year of practice and in the years to follow.
