Do You Need a Lawyer to File a Trademark?

Do You Need a Lawyer to File a Trademark?

by Jane Haskins, Esq., January 2015

You can search for existing trademarks and prepare and file a trademark application using online tools on the U.S. Patent and Trademark Office (USPTO) website or through another online trademark service—without the assistance of a lawyer.

While the application process can be done on your own, there are certain procedures and formatting requirements that you must follow, and you must choose the correct filing basis and description for your products or services. If your application is not prepared properly, it may be refused or delayed.

When You Need a Lawyer

In some instances, it is a good idea to consult with a lawyer, either before, during or after the trademark registration process. Reasons to contact a lawyer include:

  • You have conducted a trademark search and are concerned that there might be a likelihood of confusion between your mark and another mark that is already registered or for which there is a pending registration application. A trademark lawyer can advise you on the chances that your trademark application will be refused due to confusion with the competing mark or can help you revise your application so it will be more likely to gain approval.

  • You have questions about trademarks or trademark registration that are not answered by the USPTO website or other online resources.

  • You anticipate filing foreign trademarks as well as a U.S. trademark and you want assistance from someone with expertise in foreign trademark laws.

  • You need to respond to a refusal to register or an Office action.

  • You believe that someone else is using your trademark without your permission. Trademark owners are responsible for enforcing their trademarks. Failure to protect your trademark can lead to assumptions that the owner has abandoned the mark or consented, even informally, to its misuse. A lawyer can explain your rights and advise you on how to respond to a possible infringement and, if necessary, file a lawsuit on your behalf.

  • You are accused of trademark infringement. Often, an accusation will come in the form of a cease and desist letter asking you to stop using the mark and threatening legal action if you do not. A lawyer can evaluate the letter and advise you on how to respond.

Finding a Trademark Lawyer

If you do decide to hire a lawyer, you should look for someone who has experience conducting and evaluating trademark searches, filing applications with the USPTO, and enforcing trademark rights. Finding an attorney who has worked on trademarks in your particular industry may also be important, as there may be industry-specific knowledge that will help your application get accepted more easily. You will also want to make sure that the attorney will be the one handling your application, and that they won’t be passing it off to a paralegal.

In searching for a trademark attorney, you may come across businesses that offer services for trademark applications that are less expensive. However, it is highly advised that you hire a licensed attorney, as she will be more knowledgeable regarding trademark laws.

The USPTO does not recommend attorneys or provide lists of attorneys. Your local bar association may have a directory of attorneys or a lawyer referral service that can help you find a lawyer with expertise in trademark matters.

Ready to register a trademark? LegalZoom can help. LegalZoom's attorney-led trademark registration services allow you to register a trademark with the help of an attorney. 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.