Do I Need an Attorney?

When applying for a federal trademark, you do not, repeat, do not need an attorney. The U.S. Trademark Electronic Search System (TESS) is freely available to anyone. You can file your trademark application online at the United States Patent and Trademark Office (USPTO) website. Everything you need is available for free, without the need for legal services. (You could also rely on a common law trademark , but we wouldn’t recommend it.) Yes, you can save a few hundred dollars by not using a law firm and filing your own trademark application. Just don’t expect that the trademark office will grant you the mark.

When you hire an attorney your application has a 50 percent greater chance of approval ( Source ). Are you willing to take that kind of risk with your intellectual property to save a few hundred dollars? Do you have time to learn the ins and outs of trademark law for really take this on yourself? For most small business owners, the answer is no.

How a lawyer can help

Trademark attorneys don’t simply file your application for you. If you choose the right lawyer, he or she will help you through the entire trademark registration process, from choosing a name all the way through final approval and monitoring for trademark infringement later on. And if something goes wrong, they can help you reply to any office actions. All of this assistance and the proper legal advice helps assure approval on the first try – if these aren’t the trademark services being offered, look elsewhere.

Help you choose the right trademark

Once a trademark is approved, getting the decision reversed becomes incredibly difficult. In some cases it is impossible. Because of this, the trademark office is very careful about which trademarks it approves.

Trademarks go through a rigorous screening during the application process. The trademark office could reject your trademark filing because it appears similar to another mark, or violates intellectual property law. If rejected, you are not entitled to a refund. Multiple denials means multiple applications, which means multiple application fees.

An attorney will review your mark and evaluate its eligibility before you file the application. Instead of submitting marks blindly, you will submit a mark that the USPTO is far more likely to approve.

Conduct a search

The USPTO will likely reject your application if another company holds rights to the same, or a similar, trademark for a related type of product or service. So while you don’t need to conduct a search prior to filing an application, it is greatly recommended. A simple search could save you the time and expense of a rejected application.

There are over three million registered trademarks in the U.S. alone. The chances of your mark being similar to another are a lot higher than you might think.

You could search TESS yourself, but do you know how to conduct a proper trademark search? If the USPTO thinks your mark is similar to an existing one, it will reject your application. A trademark lawyer can conduct in-depth searches, looking for anything similar to your mark. Only with a complete, comprehensive trademark search can you ensure your mark doesn’t duplicate an existing one.

Help you with the form

Have you ever seen a trademark application form? It’s a complex beast, especially for those not familiar with legal jargon. You’ll have to fill out that form in full, with no assistance, if you decline to hire an attorney.

Remember, one mistake can lead the USPTO to reject your application.

A trademark attorney will guide you through the application, so that you fill it out properly. Hiring one might cost you money, but so can filing an application that the USPTO is guaranteed to reject.

Create an acceptable description

Each trademark application must list all of the goods and services that the mark will cover. It also requires precise descriptions of those goods and services. This might sound simple enough, but it can become an involved and confusing process.

If the description sounds too vague, or is not specific enough, the USPTO can reject the application. An experienced trademark attorney can help you create accurate, appropriate descriptions that will more likely lead to acceptance.

Help you respond to queries

In some cases, the USPTO might return an application with an attached query or refusal. You then have the opportunity to defend the mark, providing a reason why the USPTO should approve it. This stage is crucial, because it can mean the difference between approval and rejection.

Neglecting to reply will certainly doom your application, but not all replies will be accepted, either. Giving the wrong response will also lead to rejection. At this point there is no mistaking reality: you need to hire legal counsel to ensure approval.

If you hire a legal professional from the start there is no reason to expect you’ll experience difficulties in this way. But if you do–the USPTO can be finicky sometimes–an attorney can ensure that you properly respond to the query and ultimately get your application approved.

Handle any objections

Before the USPTO gives final approval, it publishes your trademark in the Official Gazette, a weekly publication. For the following 30 days, parties can file an objection to your trademark. This is where matters can get messy.

Even if you picked a free and clear trademark, an objection is possible. Brands protect their trademarks aggressively, and can file an objection on something that might seem outlandish. That is their right. All you can do is defend yourself in front of the Trademark Trial and Appeal Board.

Retaining a trademark lawyer or law office obviously becomes necessary at this point.

Working with the right attorney

Hiring just any attorney won’t do in any matter, no less trademarks or service marks. The wrong attorney will not only cost you in legal fees, but also possibly in additional application fees. Plus, of course, additional legal fees if the process goes for multiple rounds before you secure your trademark rights.

Before you make a decision, create a shortlist of potential attorneys. The lawyer obviously must be licensed to practice law. He or she must also be experienced in handling applications and resolving disputes. You can find out if an attorney has been involved in the latter by visiting the USPTO website and searching the Trademark Trial and Appeal Board. This will ensure you’re getting legal help from someone who has been through the common trademark issues before, and not just someone who’s a member of your local bar association.

Once you have narrowed your options down to just a few, schedule interviews with the attorneys to get a better understanding of their services. Don’t forget to prepare questions in advance. This may seem like a lot of work, but the peace of mind is invaluable once you’ve established legal claim to your intellectual property rights.

Xavier Morales, Esq.

About the Author:

Xavier Morales, Esq.

Mr. Morales founded this trademark law practice in January 2007 with the goal of providing intellectual property expertise to entrepreneurs and businesses around the country. Since then, he has filed more than 6,000 trademarks with the USPTO. You can learn more about Xavier here.

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