If you own a business, trademark registration is something that you should be considering. Trademark protection can help save your company from trademark infringement and trademark dilution. You might not need an attorney if the trademark process seems simple enough for you to do well enough on your own, but it’s important to know what steps are involved before making that decision.
Plus, filling out and submitting a trademark application on your own doesn’t always save you money. If mistakes are made, you risk having your application denied and losing your filing fee. If that were to occur, you’d have to start the entire process over again. Of course, you don’t want that to happen.
In this article, we’ll go over whether you need a trademark attorney, common problems you could face if you choose to engage in the trademark process alone, and how a trademark registration lawyer can help if you choose to work with one.
The trademark process can be complicated and mistakes happen, so it’s not always easy to know if you need a trademark attorney. However, some signs indicate when it might be beneficial.
If your trademark application is denied or rejected due to an error on your part, then yes–you may have needed the assistance of a trademark registration lawyer. If you’re uncertain whether or not you should bring in a trademark attorney but want more guidance along the way, consult with one before submitting any applications for protection.
If you’re looking for an authoritative source (outside of a legal firm) that suggests hiring a trademark attorney might be a good idea, consider a recent study from the University of North Carolina (UNC). In a UNC Legal Studies research paper authored by Deborah R. Gerhardt and Jon J. (McClanahan) Lee, it was found that “applications filed by attorneys increased the likelihood of approval by up to fifty percent.”
That is because trademark lawyers are experienced in filing applications and working with the U.S. Patent and Trademark Office (USPTO). They have familiarity with the whole registration process that you more than likely do not.
You may feel that the trademark registration process is relatively straightforward, but many find it confusing. Because of that fact, some have made mistakes that could have been avoided if they’d chosen to speak with a professional from the beginning. Just a few common mistakes are:
- Choosing the wrong filing basis. There are two: an intent to use the mark in commerce and use the mark in commerce. They aren’t the same, and many choose the wrong one because they don’t know the difference between them. A mistake in this area can create a registered trademark that offers almost no protection at all when you try to enforce it.
- Misidentifying your services or goods or selecting the wrong trademark class is another big yet common mistake. In essence, you have to identify the services and goods you want to be protected and pick the class of services or goods to protect your trademark.
- Obviously, another problem is that when filing applications yourself, no one checks your work for errors like typos or missing information, so you don’t get caught up on those things before submitting the application, which can lead to rejected registrations.
It’s worth noting that if you choose to do everything yourself and then mess it all up, it could cost you much more to hire a trademark attorney to fix your mistakes than if you had simply hired a lawyer in the first place.
First (and perhaps foremost), a trademark attorney can save your business time and money by filing trademark applications on your behalf without errors. Before you ever file, they can also help with things like:
- Doing trademark searches.
- Responding to trademark office actions (exceptions, refusals, etc); and
- Providing legal opinion letters on the availability of trademarks before they are applied for or registered to reduce the risk associated with potential future infringement claims; and more.
You should understand that no rule states you must hire a trademark attorney to apply for a trademark. You do not need one to file. It’s totally possible to do the necessary research, fill out the application, and file by yourself. Moreover, the U.S. Trademark Electronic Search System (TESS) and the United States Patent and Trademark Office (USPTO) website are entirely free.
However, the truth is that it’s easy to make mistakes if you aren’t familiar with the trademark registration process. Making mistakes can cost you much more in the long run than if you’d chosen to hire an attorney to help you. Whether you choose to hire an attorney is entirely up to you, but keep in mind that research has shown your chances of being granted the mark you want to increase when working with a lawyer.
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