Do You Need a Lawyer to File a Trademark? by Jane Haskins, Esq.

Do You Need a Lawyer to File a Trademark?

Find out why hiring a trademark lawyer can be a smart move.

by Jane Haskins, Esq.
updated December 21, 2020 · 3 min read

Although you can register a trademark on your own, using an attorney can make the process go more smoothly and—believe it or not—save you time and money in the long run. Trademark applications can be complicated and confusing if you don't have the relevant experience. Mistakes can be expensive and cause your application to be denied.

trademark symbol and office supplies

Trademark Defined

A trademark can protect the words or symbols you use to identify your business. For example, the Nike Corporation has trademarks in the name “Nike," the swoosh symbol, and the phrase “Just Do It." The Coca-Cola Company has a trademark in the name “Coca-Cola" as well as the way the name looks when written in white script on a red background.

The key to trademarks is that they must be used in business. If you register your mark with the U.S. Patent and Trademark Office (USPTO), you'll have exclusive rights to use your trademark throughout the United States.

Specialized Knowledge of Trademark Attorneys

A trademark attorney has experience handling trademark applications, Office actions, and enforcement. They are familiar with the USPTO's procedures and its strict deadlines and understand how to prepare an application so it has the best possible chance of success.

Trademark lawyers often have had specialized training in trademark law and filed many trademark applications. This means they can navigate the registration process more effectively than you can on your own.

Role of a Trademark Attorney

A trademark lawyer can handle the entire trademark registration process for you, making sure it's done right. A trademark attorney can:

  • Search for similar trademarks that might prevent your mark from being registered or used in commerce. This can include USPTO-registered trademarks, state trademarks, and common law trademarks that have never been registered.
  • Interpret the search results and advise you on the likelihood that your trademark registration will be successful and whether your mark can be used in commerce without infringing on any other trademarks.
  • Explain how to choose a strong name or other trademark and evaluate the strength of the marks you are already using.
  • Explain how you should use your mark to give it maximum protection.
  • Prepare and file a trademark application that meets all USPTO requirements.
  • Amend a trademark application.
  • Stay on top of deadlines, check trademark registration status, and respond to issues that come up after your application has been filed.

A trademark attorney can also help enforce your trademark after it is registered by monitoring new trademark applications or uses of your trademark and either opposing the applications or taking action to stop the infringing use.

Registering a Trademark Without an Attorney

Anyone can file a trademark online through the USPTO website. But there are many potential pitfalls for those trying to navigate the process on their own. Those pitfalls can turn into expensive mistakes that could have been avoided if a lawyer had been involved in the process.

For example, you must choose the class(es) of goods or services for which you want protection. There are 34 classes for goods and 11 for services, and it's not always obvious which best apply. Trademark registrations typically only provide protection in the class(es) selected, and mistakes may make it difficult to go after an infringer.

Other common mistakes include:

  • Choosing the wrong filing basis
  • Submitting an improper trademark specimen
  • Trying to register something that does not qualify as a trademark

The USPTO may sometimes allow you to fix mistakes within a very strict deadline. If you're unable to resolve them, it will deny your application.

Mistakes in a trademark application can cost time and money, and a trademark denial can cost you hundreds of dollars in nonrefundable filing fees. That's why, for many people, a trademark lawyer is money well spent.

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Jane Haskins, Esq.

About the Author

Jane Haskins, Esq.

Jane Haskins is a freelance writer who practiced law for 20 years. Jane has litigated a wide variety of business dispute… Read more