8 Questions to Ask a Trademark Attorney

A consultation with an intellectual property attorney can help you learn more about trademarks and how they can benefit your business. An attorney can give you an overview of the registration process and explain how to maintain and protect your trademarks.

To make the most of your consultation time, come prepared with a list of questions. Here are eight key questions to ask.

What is a trademark?

Although trademarks, patents, and copyrights are often lumped together as intellectual property, they protect different things.

• Patents usually protect inventions, such as machinery, pharmaceuticals, products, and more.
• Copyrights protect original creative works such as novels, artwork, and songs.
• Trademarks protect the brands used to identify your business, such as your business name, logo, or tagline. A lawyer can help you identify your business's trademarks.

Why would I want a registered trademark?

Simply using your name, logo, or other mark in your business may give you some trademark security. Still, this common law protection usually doesn't give you any rights outside the geographic area where the trademark is used. Similarly, you can register a trademark with your state, but that won't protect you beyond state lines.

By registering your trademark with the U.S. Patent and Trademark Office (USPTO), you get nationwide rights to your trademark, along with other benefits. A lawyer can more fully explain the pros and cons of your particular business.

Can I get a registered trademark?

There are several requirements for registering a trademark for your business name. For one, you must actually use the name in your business, and the name must be distinctive— names like New York Pizza for a pizza shop or Good Coffee for a coffee shop are generally too descriptive to qualify. The name also must not be confusingly similar to an existing registered trademark.

The same criteria apply to logos and other marks you might want to register. A lawyer can evaluate whether your trademark application is likely to succeed.

Do I need a trademark attorney to file a trademark application?

Although you can file a trademark application online yourself, the process is not as simple and straightforward as it might seem. It is easy to make mistakes that may cause your application to be delayed or denied.

If your application is ultimately denied, you cannot revive it or recoup your filing fee. An alternative to hiring a local attorney is to work with a trademark filing company, preferably one that has been around a while and so has both experience and a strong reputation.

How does the trademark registration process work?

Trademark registration should ideally start with a thorough search for any similar marks that might make it difficult or impossible for you to register yours or use yours in commerce. Then, an application is prepared and filed that meets all the requirements of the USPTO.

After the USPTO receives your application, an examining attorney reviews it and, if there are any issues, sends you a letter called an Office action. Once any Office actions have been resolved, the USPTO publishes your trademark for opposition. If no one opposes it or if oppositions are resolved in your favor, your mark is registered.

There is a slightly different procedure if you are applying for a trademark that you have not yet started using in commerce. An attorney can explain what information you need for your application and what to expect.

How long does it take to register a trademark?

Ask the attorney how long it takes to register a trademarks, and then prepare and file your application. From there, the timing is in the hands of the USPTO.

At a minimum, expect to wait several months for your registration to be approved, but be prepared for the process to take much longer if there are Office actions or oppositions.

How much does trademark registration cost?

USPTO filing fees differ depending on the type of application you file and the number of classes of goods or services you want to register your mark in.

A trademark lawyer may charge an hourly rate or a flat fee, and you should know upfront what the fees are. You may have additional legal fees if you hire a local or online trademark attorney to help with Office actions.

What are the steps to maintain a trademark once it's filed?

Once your trademark is registered, it's good for 10 years and can be renewed for additional 10-year periods. To keep your trademark in good standing, you must file maintenance documents between the fifth and sixth year after registration, between the ninth and tenth year after registration, and every 10 years after that.

In addition to keeping up with these filings, you are responsible for protecting your trademark against infringers. That may mean monitoring trademark applications and taking action if you discover another business is using your mark.

A consultation with an intellectual property lawyer is a good way to get your trademark questions answered and determine if registering a trademark is right for you. Once you understand the basics, you'll be ready to get started on the application process.