Unfortunately, many small business owners fail to take the time to determine whether the name they have chosen for their product or business is actually available for them to legally use. If you’re a small business owner and you want to eliminate the chance of having to deal with any future costly trademark disputes, it’s highly recommended that you take the time to file an application and register your trademark with the United States Patent and Trademark Office (USPTO). Although not required, it can be helpful to hire a private trademark attorney who can help you throughout the entire trademark registration process.
In fact, in a section on their website regarding the use of private attorneys, the USPTO includes the following message:
“While you are not required to have an attorney, an attorney may save you from future costly legal problems by conducting a comprehensive search of federal registrations, state registrations, and “common law” unregistered trademarks before you file your application. Comprehensive searches are important because other trademark owners may have protected legal rights in trademarks similar to yours that are not federally registered.”
Before starting the trademark application process on your own, consider the following ways in which an attorney can help.
1. A trademark attorney can help you decide if and when you should file an application
Before you get too far into the application process, it’s important to determine whether or not another person or business already owns the rights to a trademark you wish to register.
According to the USPTO, “Comprehensive searches are important because other trademark owners may have protected legal rights in trademarks similar to yours that are not federally registered. Therefore, those trademarks will not appear in the USPTO’s Trademark Electronic Search System (TESS) database but could still ultimately prevent your use of your mark.”
An attorney can help perform a comprehensive search on your behalf, and will be able to tell you whether or not you should move forward with your application. If you do decide to move forward, your application must also specify the proper “basis” for filing (“use in commerce” or “intent to use”). An attorney can help you determine which basis to specify in your application, and can tell you if there are any additional forms or fees you’ll need to submit based on what you specify.
2. A trademark attorney can help you actually file an application
If you are busy running your small business and don’t have a lot of extra time to spend on filling out and submitting an application, it might be beneficial to hire an attorney. According to the USPTO, “trademark lawyers can help you during the application process with several things that could seriously impact your trademark rights, such as determining the best way to describe your goods and services and preparing responses to refusals to register that an examining attorney may issue.”
3. A trademark attorney can help monitor the status of your application
In addition to helping with submitting an application to register a trademark, an attorney can also help monitor the status of your application. If you choose not to hire an attorney, it’s up to you to be diligent about monitoring your status in order to ensure that all documents sent to or received from the USPTO are acted upon in a timely manner.
4. A trademark attorney can help educate you on your ownership rights
Trademark law in general protects a trademark owner’s commercial identity (goodwill, reputation, and investment in advertising) by giving the trademark owner the exclusive right to use the trademark on the type of goods or services associated with the mark. Before, during, and after the application process, an attorney can help educate you on trademark ownership rights.
5. A trademark attorney can help assist in the policing and enforcement of your trademark rights
Early detection of potential trademark infringement is critical because the failure to properly defend your trademark against trademark infringers could diminish the strength of your trademark, and may even result in abandonment or cancellation of your registration.
On their website, the USPTO states the following in regards to enforcement:
“You are responsible for enforcing your rights if you receive a registration, because the USPTO does not “police” the use of marks. While the USPTO attempts to ensure that no other party receives a federal registration for an identical or similar mark for or as applied to related goods/services, the owner of a registration is responsible for bringing any legal action to stop a party from using an infringing mark.”
For many small business owners who are busy each and every day managing staff, launching new products, and providing helpful customer service, spending time monitoring for potential trademark infringement is simply not feasible. If you’re in this situation as a small business owner, hiring a trademark lawyer to help with monitoring, detection, and enforcement may be a good option for you.
At The Law Office of Xavier Morales, we offer a comprehensive suite of trademark related legal consultation. Please click here for more information about our offerings.
Common Trademark Topics for Business Owners
- Branding for Freelancers
- Trademarking a Logo
- Requirements for the Amazon Brand Registry
- Trademarks vs Service Marks – What’s the Difference?
- Trademarks and Domain Names
- Can Your Trademark a DBA?
- Can You Trademark Packaging
- Can You Trademark a Business Model
- Can You Trademark a Company Name
- Can You Trademark a QR Code
- Can You Trademark a Business Concept
- Can You Trademark a Product