Do I Need a Lawyer to File a Trademark Application?

*Photo by torbakhopper is licensed under CC 2.0. *

If you own your own business, you know that protecting your brand is crucial. So, in order to secure the rights to your trademarks, you may have considered registering your marks with the United States Patent and Trademark Office (USPTO).

Filing a trademark application with the USPTO, however, can be a long, complex endeavor requiring close adherence to a large body of rules and regulations. The natural question then is, “Do I need a lawyer to file a trademark application?”

Do I Need a Lawyer to File a Trademark Application?

Because of the complexity associated with filing a federal trademark application, most applicants hire an attorney to assist them with the process. There is no requirement that you hire an attorney, and so you are free to attempt the process on your own.

An error in the application process, however, could result in the denial of your registration request and the loss of your application fee. The application fee can be quite significant, and hiring an attorney could be cheaper than the accumulated cost of a handful of failed applications.

A USPTO attorney will examine your application and may be able to assist you through the process, but you should not expect much substantive assistance from these attorneys. They work for the USPTO and are prohibited from providing you any legal advice.

A trademark lawyer, on the other hand, can guide you through the entire process, providing assistance on the front end and following through to the completion of the trademark application process and beyond.

That is to say that legal assistance may be important beyond the registration of your mark because you alone are responsible for ensuring that no one infringes upon your trademark. The federal government will not do this for you. An attorney can assist you with this process as well.

So, when you ask yourself, “Do I need an lawyer to file a trademark application?” these are matters that you should keep in mind.

Trademark Searches

Even those who feel comfortable with the application process may want to secure the services of a trademark attorney to ensure that the desired trademark is registrable. An attorney can conduct a search of other trademark claims on the frontend to help you avoid problems later.

This is important because, as I discussed elsewhere, registration is not required to secure trademark rights—though the protections and scope of protection available without registration may be limited. This means that someone may have a stronger claim than you to your mark despite having not registered the mark with the USPTO.

The USPTO may even register your trademark only for you to later find out that someone else was using your mark before you. This is not something you want to discover after investing large sums of money in your mark and your brand.

This is another factor to consider when asking yourself, “Do I need a lawyer to file a trademark application?”

Guidance Through the Process

A trademark lawyer may also be able to secure registration for a mark by saving an application that may otherwise be denied. This may occur when the USPTO, after considering your trademark application, issues an Office Action letter.

An Office Action—other than those issuing final denials—are often requests for additional information or clarification. An attorney can help provide proper responses to these actions to help guide your application to final success.

In addition, an attorney can help provide proper responses to refusals to register issued by the USPTO examining attorney. The process can be quite complex, and so having an attorney on your side can be very valuable.

So, if you are still asking yourself, “Do I need a lawyer?” I hope that this post will help you make an informed decision. Some people are able to navigate the process successfully on their own. Others, however, feel much more comfortable with legal assistance.

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Sources:

Protecting Your Trademark: Enhancing Your Rights Through Federal Registration

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See Also:

Registering Your Trademark

The Basis for a Trademark Application