If you’re wondering whether you need a trademark attorney, we have answers on how complicated the trademark application process can be and why you might want help.
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by Page Grossman
Page is a writer and strategist who covers finances and entrepreneurship, among other topics. In her spare time, she ...
Updated on: June 17, 2024 · 13 min read
Whether you need to hire a trademark attorney depends on your particular situation. Trademark attorneys have experience prosecuting trademarks before the United States Patent and Trademark Office (USPTO). Because trademark registration is a legal proceeding with strict procedures and deadlines, a lawyer who specializes in the process can handle registration more efficiently than you can on your own.
There is no requirement that you hire and work with a trademark attorney, but depending on how much time you have to dedicate to the trademark filing process and your ability to be detail-oriented, you might want someone knowledgeable to assist you.
There are a number of ways working with a trademark lawyer can help you more easily navigate complicated legal processes.
A trademark attorney can:
Help you enforce your trademark in the future. The USPTO does not enforce trademarks—that’s up to the trademark owner. A lawyer can help monitor new trademark applications or uses of your trademark and take steps to oppose or stop potentially infringing uses.
If you’re interested in filing for a trademark and protecting your intellectual property, it’s important to understand that the process can be complicated and full of potential pitfalls. While you can navigate that on your own, letting a trademark lawyer be your guide can make the process simpler and take less time.
There are a number of ways a law firm with experience in trademarks can benefit and support you through the trademark registration process. You can choose to work with an attorney throughout the entire process or bring someone on to help you with a specific step or challenge along the way.
First and foremost, trademark attorneys can offer you legal advice on trademark law. You might want advice on:
As you can see, there are a number of different ways that an experienced attorney can help guide you through the trademark application process and support you in defending and maintaining your trademark once it’s registered.
Another task that a lawyer who offers trademark services can help you with is completing a thorough trademark search.
Before you apply to register your trademark, you’ll want to assess whether or not that mark is already in use or registered by someone else.
If someone is using or has registered a mark that is similar enough to yours, then your trademark application will be rejected. You won’t be able to register your mark.
Something that’s often misunderstood about trademarks is that the use of a mark provides immediate, local trademark protection. Even without registration, you have the right to use your mark in your local market as long as it’s not too similar to any other mark.
Trademark registration provides a higher level of protection for your mark and allows for its use nationwide without infringement.
An attorney can help you to complete a thorough search that ensures there are no other similar marks already in use. A comprehensive search includes searching:
A lawyer can help you navigate the application process. Once your application has been completed and submitted, you’ll still need to receive approval. Before approval is granted, a USPTO lawyer may have questions or recommend changes to your mark. Your lawyer can help guide you through that process and answer the questions that are asked.
If your trademark application is denied or there are issues with your application, a lawyer can represent you during the appeal process with the Trademark Trial and Appeal Board, or TTAB. The USPTO's trademark trial process can be a challenge to navigate on your own.
You may need to work with the TTAB under these circumstances:
Each of these proceedings has specific procedures and deadlines. A trademark lawyer can help you to navigate the process and present your best case or defense.
If you’re granted trademark registration, it then becomes your legal responsibility to monitor, enforce, and maintain your trademark rights.
An attorney can help you understand the legal scope of your rights and how to defend them, when necessary. They can advise you on what to do if you notice someone using your trademark without authorization and can guide you through the process of challenging that use.
To maintain your trademark rights, you must continue to use your trademark and file registration maintenance paperwork regularly. An attorney can help you with filing this paperwork on time.
While it might be less expensive to file your trademark yourself, unless it’s done correctly the first time, you run the risk of spending additional time on your process by going through the examination process for a mark that’s not unique enough. If done correctly, the DIY method can be less expensive than hiring an attorney. But, there are many potential pitfalls along the way where you may end up needing the help of an attorney anyway, which will cost you more time and money.
The trademark registration process may seem straightforward, but the requirements can be confusing. As a result, trademark owners can make costly mistakes that could have been avoided if a lawyer had prepared or reviewed the application.
Common mistakes include:
In the end, it may cost much more to hire a lawyer to deal with an improperly prepared application than it would have cost to hire a lawyer to do it right the first time.
If you’re planning to file for trademark registration or are in the midst of attempting to defend a trademark and want the help of an experienced lawyer, there are a few places you can go to find someone with the specialized knowledge you need.
In all likelihood, you won’t be able to hire a traditional business attorney. Instead, you’ll want to find someone who specializes in intellectual property law or specifically works on trademark law.
The best referrals always come from people we know and trust. Start by asking around to other fellow business owners you know if they’ve worked with an attorney to file for a trademark. If that specific case doesn’t come up, you may try asking a friend’s business lawyer if they know any trademark attorneys. Oftentimes, lawyers know lawyers with other specialties, especially those that may be similar to their own.
If you’re part of any local business groups, whether they meet in person or have an online forum, this can be a great place to request an introduction to a local lawyer who offers trademark services.
You might also find local attorneys are invited to speak at business conferences or attend events.
This can be a great way to connect with someone and vet whether or not you’ll like working with them.
You can also find an attorney by searching your state or local bar association website. These online referral databases often include lawyer’s names, contact information, and legal specialty.
Many online legal services also keep a list of lawyers who are able to help with trademark issues. At LegalZoom, our online tool allows you to fill out a few simple questions and be connected to an experienced, knowledgeable trademark attorney. You can also call to do a free trademark consultation before getting started.
Our trademark search and registration package costs $649 plus federal fees. This package includes:
If your application is rejected, we offer our Second Chance Promise and will help you file another application for free.
Online legal services such as what we and a few other companies offer, have made it easier for business owners to get connected to the right attorney and to affordably file for trademark protection. Before you work with an attorney, be sure to review their page and read reviews from past clients to ensure you’ll be a good fit to work together.
If you’re just starting out and don’t have a lot to invest in trademark registration, you can also find some affordable or free legal help.
The United States Patent and Trademark Office Law School Clinic Certification Program is a training program for lawyers who want to specialize in intellectual property law. Students need real-world practice filing trademark applications and, under the guidance of faculty, can submit your application for free.
You might also be able to find a local lawyer who is willing to work pro bono (for little or no cost for the public good) or for free on your trademark application. The American Bar Association has a list of attorneys by state who may be able to help for free. You can also apply through the International Trademark Association to use some of their pro bono services.
When filing for a trademark, you’ll spend time working closely with your attorney and their trademark law firm. It’s important to find someone who is highly qualified to do the work while also being someone you can communicate with well.
Yes, you can file a trademark application yourself. While you can DIY the trademark registration process, there’s the potential for many complications along the way. Hiring an experienced attorney lowers the risk of your trademark being rejected or missing important deadlines.
Electronic trademark filing fees currently range from $225 to $400 per class of goods or services, depending on the type of application you file, according to the USPTO website. The cost of filing a paper application is currently $600 per class of goods or services.
Additionally, every 10 years you must file an application to renew your trademark registration. USPTO fees for trademark renewals are currently about $300 for an electronic application and $400 for a paper application.
The USPTO employs certain factors to calculate the filing fee for an initial application, including the number of trademarks, number of classes, and chosen filing option (called TEAS Standard or TEAS Plus). You may only apply for one trademark per filing. The filing fee is not refunded if the trademark application is rejected.
In addition to filing fees, the cost to hire a trademark lawyer can range from a few hundred dollars to a few thousand dollars, depending on the complexity of your situation and other factors. Some trademark attorneys charge by the hour, while others will handle your matter for a flat fee.
Obtaining a federally registered trademark allows you to distinguish your product or service from your competitors' products or services. When the USPTO provides its stamp of approval on a trademark, a legal presumption of ownership is created that provides the company the exclusive rights to use the trademark in connection with its products and services.
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