8 Questions to Ask a Trademark Attorney

8 Questions to Ask a Trademark Attorney

by Jane Haskins, Esq., May 2016

If you’ve decided to make an appointment with a trademark attorney, then you probably already know that trademarks can be among your company’s most valuable assets. Whether it’s your business name or the logo and tagline you put on all your products, your trademarks identify your brand and set it apart from competitors.

A trademark attorney can advise you on trademark law and help you register and enforce your trademarks. But if you don’t know much about trademarks to begin with, you may not know what questions to ask at your initial meeting.

Here’s a list to get you started.

1. What Is a Trademark and Why Should I Register One?

Many people are afraid they’ll sound stupid if they ask their attorney what a trademark is. But asking this basic question up front can clear up any misconceptions you may have. It also prevents your attorney from assuming that you know more than you do. Your attorneyshould also explain the pros and cons of registering a trademark.

2. What Kinds of Things Can I Trademark?

You probably already know that you can trademark a name or logo for your business. But you may also be able to trademark a product design, such as the Coca Cola bottle shape, or a sound, such as the NBC chimes. A trademark registration attorney can help you identify what you can or should register as a trademark, how to trademark a name for your business, and why one trademark may be more valuable than another.

3. How Can I Choose a Strong Trademark?

If you haven’t settled on a business name or logo yet, a trademark attorney can offer valuable advice on choosing a strong mark that will offer you maximum protection.

For example, not all business names are suitable for trademark protection. Names that are generic or descriptive, like “New York Pizza” usually can’t be trademarked, while made up names like “Kodak” get strong trademark protection but tell you nothing about the products they identify. A trademark attorney can explain the rules, conduct a trademark search for similar marks, and help you evaluate the strength and enforceability of your business name or other mark.

4. How Do I Choose a Trademark Class and Description?

A trademark registration only protects your mark for use in a particular class of goods or services. The USPTO has a long list of trademark classes, and it’s important to pick the correct one so you can register your mark and protect it from infringement. Choosing a class can be confusing, however, because a good or service might potentially fall into more than one class. And sometimes it’s a good idea to register for more than one class. An attorney can help you decide.

5. Which Trademark Specimen Should I Use?

As part of your trademark application, you must include a trademark specimen that shows how you actually use your mark in commerce. The specimen is different than a drawing of your mark. For example, if you have a logo, the drawing would show the logo, but the specimen might show the logo as it appears on a label or product package. An attorney can explain how to submit a specimen and advise you on which specimen to use.

6. What Will it Cost to Register My Trademarks?

The USPTO charges a filing fee per class of goods or services you register. So if you register a trademark in more than one trademark class, you will pay a higher fee. You can expect to pay additional fees if you want to register your trademarks overseas. Your attorney will also charge you legal fees, usually either hourly or as a flat fee. You may also pay costs associated with a trademark search. Understanding the trademark cost up front will help you evaluate which trademarks you want to register.

7. Once I’ve Registered My Trademark, How Can I Protect It?

Registering your trademark is only the first step in protecting your trademark. You also must use your registered trademark in your business and use it properly. “Aspirin” and “Escalator” were once trademarked brand names, but they lost their trademark protection because their owners didn’t control their use. The US Patent and Trademark Office (USPTO) doesn’t enforce trademarks – that’s up to you as a trademark owner. A trademark attorney can offer guidance on how to use and enforce your trademark.

8. What Do I Need to Do to Maintain My Trademark Registration?

Trademark rights can last forever, but to keep your registration alive you must continue using your trademark in commerce and you must file maintenance documents with the USPTO between the fifth and sixth years after registration, between the ninth and tenth years after registration, and every 10 years after that. If you don’t file the required documents on time, your trademark registration will be cancelled. Trademark attorneys can explain what’s required and how to avoid missing a deadline.

Meeting with a trademark attorney is a smart step toward protecting your trademarks. Knowing what to ask will help make your meeting more productive and ensure that you leave the meeting with the information you need.

If you're ready to register a trademark, LegalZoom's attorney-led trademark services will put you in touch with a trademark attorney who can help. With attorney-led trademark services, an attorney will contact you to learn more about your product or service and begin a comprehensive trademark search. Once an attorney has reviewed your information and prepared your trademark application, he/she will send it to you to approve. Your team of attorneys will be there to answer your questions, monitor the progress of your application, and take action when necessary.