I am a trademark lawyer. On paper, my job is to run clearance searches, classify goods, draft applications and respond to IMPI office actions.
In practice, a good part of my time goes on things nobody taught me at law school.
Psychologist
To sit with someone through the grief of letting go of a name they used for years without registering it.
It is the hardest conversation in this job. Someone arrives with a business that works, with clients who know them by that name, with signage, packaging and an account with thousands of followers. And it turns out somebody else registered it first, or the sign is not registrable because it describes the product.
There is no legal argument that fixes that. There is a difficult decision, better taken early, because every month that passes the name is worth more and letting go hurts more.
Translator
To explain that an IMPI office action is not a refusal, that an objection can be answered, and that a prior mark does not mean you have already lost.
Much of an owner’s fear comes from not understanding the document in front of them. Explained in plain language, it is almost always less serious than it looked. And when it is serious, at least they know why.
The one who spoils the party
To say no before they spend.
There are beautiful names that cannot be registered. Saying so in time is part of the service, even when it means that person does not hire me that day. Official fees are not refundable, and a badly framed application is not cheaper: it forces you to redo the process and pay for it again.
Memory
To flag the deadlines nobody has in their calendar.
The declaration of use is filed within the three months following the third anniversary of grant. If it is not filed, the registration lapses automatically, without the Institute having to declare it. It is, in our experience, one of the most frequent and most avoidable losses of rights there is.
What stays with me
If running trademark files has taught me anything, it is that the technical work is the easy part. The hard part is helping someone make an informed decision about something they built over years.
That is why I keep insisting on the same point: the time to register is before the name matters. Afterwards, the conversation stops being a legal one.
If you have questions about your trademark, write to us. The clearance search is free of charge and we will tell you frankly what we see.