Do I Need a Trademark Attorney?

Do I Need a Trademark Attorney?

by Jane Haskins, Esq., June 2015

With a filing fee of at least $275, registering a trademark can feel expensive to a cash-strapped startup. Hiring a lawyer to handle the process may seem out of the question.

But a DIY trademark application isn’t always a money saver. If you do it wrong, you can have your application denied, lose your filing fee, and have to start the whole process over again. Or you may spend a lot of time responding to issues raised by the trademark examining attorney instead of focusing on your business.

Do I Need a Trademark Attorney?

The answer depends on your particular situation. Trademark attorneys have experience prosecuting trademarks before the U.S. Patent and Trademark Office (USPTO). Because trademark registration is a legal proceeding with strict procedures and deadlines, a lawyer who is familiar with the process can handle registration more efficiently than you can on your own.

A trademark attorney can:

  • Identify problems that might arise with your trademark registration.  For example, someone else might have common law or state trademark rights that aren’t registered with the USPTO and won’t show up when you search the USPTO’s Trademark Electronic Search System. A lawyer can conduct a more thorough trademark search.
  • Evaluate the strength of your trademark and advise you on choosing a strong mark.
  • Explain how you should use your mark to give it maximum protection.
  • Prepare and file a trademark registration application that meets all USPTO requirements.
  • Advise you on the likelihood that your trademark registration will succeed.
  • Respond to issues that come up after your application has been filed and assigned to an examining attorney at the trademark office.
  • Help you enforce your trademark in the future. The USPTO does not enforce trademarks – that’s up to the trademark owner. A lawyer can assist with monitoring new trademark applications or uses of your trademark and taking steps to oppose or stop potentially infringing uses.

Common Problems When People Try to Register a Trademark Themselves

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 the application had been prepared or reviewed by a lawyer. Common mistakes include:

  • Selecting an improper filing basis. There are two filing bases: use of the mark in commerce and intent to use the mark in commerce. Many people choose the wrong basis because they don’t understand the difference. This mistake can create a registered trademark that offers little or no protection when you try to enforce it.
  • Submitting an improper trademark specimen. As part of the application, you must submit a specimen that shows how you actually use your mark in commerce. Submit the wrong type of specimen and you may not get protection for your mark.
  • Choosing the wrong trademark class or misidentifying your goods or services. You must choose a class of goods or services in which to protect your trademark, and you must identify the goods and services you want to protect. The classification system can be confusing, and getting it wrong can cause your application to be denied.

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.

How Do I Find a Trademark Registration Attorney?

You can find a lawyer with expertise in trademark law by contacting your local bar association. Many bar associations have online directories or lawyer referral services. Or, you can conduct an internet search for “trademark lawyer” in your locality.

Trademarks may be your business’s most valuable intellectual property. Although you can register your trademark on your own, there are lots of ways it can go wrong. Getting advice and assistance will help ensure that your trademark filing is as smooth and efficient as possible.

If you're ready to register a trademark, LegalZoom can help. LegalZoom attorney-led trademark registration services will put you in touch with an attorney who can assist you with the trademark registration process.



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