A potential client once called me to ask me some questions about federally registering his trademark. After speaking with him about the trademark search and USA trademark registration process, he asked me whether I offer a guarantee that his trademark application would eventually become a trademark registration. When I told him that I could not provide such an assurance, he seemed pretty shocked. After all, why would I advise someone to file a trademark application if there was a chance it would not be accepted by the Trademark Office?
The fact is that while a skilled and experienced trademark attorney will certainly provide you with an informed opinion as to whether your trademark application is likely to mature into a trademark registration, there are simply too many variables in the trademark registration process for any trademark lawyer to offer an iron-clad guarantee of registration.
The primary reason why a trademark attorney cannot say for certain whether your trademark will be approved for registration is because trademark law is highly subjective. For instance, reasonable minds can differ as to whether your trademark is likely to cause confusion with another trademark registered by someone else. Or, there can be a legitimate argument as to whether your trademark is merely descriptive (not eligible for federal registration) or suggestive (eligible for federal registration). Perhaps there is a genuine question as to whether your trademark would be considered scandalous and, therefore, not eligible for registration. So, even though a trademark lawyer may have honestly believed that your trademark would be approved for registration after conducting a trademark search and fully evaluating your trademark and any other information provided by you, there remains the possibility that the examining attorney assigned to review your trademark application might have a different opinion and could reject your trademark application on one or more grounds.
Another reason why a trademark lawyer cannot offer a guarantee of federal registration is because there is always the chance that your trademark application will be challenged by somebody during the 30 day trademark opposition period. Should that happen, you may choose to voluntarily abandon your trademark application rather than spend a significant amount of time and money defending against the opposition. Even if you decide to defend the opposition, the eventual ruling by the Trademark Trial and Appeal Board may not be in your favor, which would lead to your trademark application going abandoned. Of course, it is completely outside a trademark attorney’s control whether an opposition is filed against your application and how you ultimately opt to deal with the opposition.
Finally, if your trademark is not in use at the time your trademark application is filed, you will eventually have to use your trademark in commerce and file the Statement of Use before the Trademark Office will issue your trademark registration. Needless to say, it is solely your responsibility to properly use your trademark in connection with the advertising and sale of the products or services listed in your trademark application. If you don’t use your trademark and file the Statement of Use by the deadline, your trademark application will go abandoned through no fault of the trademark attorney.
The bottom line is that there are no guarantees when it comes to federal trademark registration, and if you come across a trademark lawyer who promises you that your trademark will be approved for registration, you should run away as fast as you can.