Yes, as long as you are an American citizen or a company domiciled in the United States, you are able to file your own trademark application. However, just because you can doesn’t mean you should–while the lack of initial legal fees may be appealing, filing an application without the assistance of a trademark attorney often results in later consequences that are even more costly. The subsequent Office Actions, potential oppositions, and other possible issues end up being more expensive in the end for the applicant than if they had initially filed their application correctly with an attorney. Read our full breakdown of the benefits of hiring an attorney vs. DIY trademark registration, found here.
Benefits of Working with a Trademark Attorney
The primary benefit of working with a trademark attorney is found in the success of application approval. A study performed by the University of North Carolina found that only 57% of applicants who filed their trademark applications without an attorney’s assistance received approval for their marks. When utilizing a trademark attorney, that number jumps to an incredible 80% application approval rate. This is often a result of the preliminary trademark searches that attorneys are able to complete prior to filing an application. Additionally, because specialized attorneys have extensive experience with USPTO filings, they understand exactly what technical language and nuances the government examining attorneys require, therefore giving applicants the highest chance of first-time approval.
Working with an attorney is beneficial due to trademark search services they may offer. At Gerben IP, the attorneys use a powerful search engine that combs through existing registrations that are potentially similar to the new mark phonetically, in sight, or in design. This tool ensures that clients are receiving comprehensive results and an accurate risk analysis when deciding to proceed with their trademark application. Should a conflict be found, the attorneys can return to the client with this discovery, preventing a future refusal and even eliminating potential litigation before it has a chance to occur. Once the search concludes, an opinion letter regarding the trademark’s search results and the corresponding risk analysis shape the following discussion between attorney and client and ultimately lead to the drafting and filing of the final trademark application.
While the USPTO’s trademark application may seem like a straightforward form, there are many opportunities beyond the surface for mistakes. The application itself is a highly technical legal document, and the language and attention to detail that the form requires may not be immediately apparent to someone who does not handle trademark documents on a regular basis. Errors entered into the application, whether it be an incorrect classification of goods and services (learn more about trademark filing classes) or an inadequate specimen for use in commerce, will result in time-consuming and costly Office Actions (what is an Office Action?). These, in turn, will warrant additional submissions to respond and fix the mistakes made in the original application. This process is made much easier through a trademark attorney’s facilitation, but also could have been avoided altogether if a lawyer had been used to file the application at the start.
The Trademark Application Process
From beginning to end, the process of registering a trademark in the United States takes approximately eight to ten months. If you choose to hire a trademark attorney to assist with the application, your journey will start with the selection of your trademark and a subsequent search of the existing registry to ensure that no direct conflicts exist, as well as provide any necessary risk of refusal that may be relevant to your mark. During this time you will also determine the filing basis of your application, as well as provide the appropriate business and sales information needed to complete the application.
Once the application is filed, it takes about three to four months before it reaches an examining attorney. The lawyer reviews the application, evaluating possible contentions with existing marks and ensuring that the application coincides with all of the USPTO’s technical requirements. If the examining attorney believes that the application conflicts with another trademark, does not meet registration standards, or finds an otherwise cited issue, the application will come back with a response called an Office Action. These returns require the applicant’s response in order to continue moving the application forward. In order to submit a sufficient response and pose the best chance of overcoming the Office Action, utilizing a trademark attorney’s expertise is highly advised.
If the USPTO attorney does not issue an Office Action, the application moves into a thirty day period of ‘publication’. During this time, any member of the public is able to oppose the trademark application should they feel that their business could be damaged by its registration. If no oppositions are filed, the application will then return to the examining attorney for a final review. At this time, the applicant must prove use of the trademark in commerce if this evidence was not previously submitted with the application. Once finalized, the examining attorney will issue the registration on the trademark, and the USPTO will forward the formal registration certificate to the trademark’s owner.
Filing a Trademark Application Alone
While it is certainly possible to file a trademark application by yourself, the complexities of the process and numerous opportunities for error are best avoided when utilizing the professional services of a trademark attorney. From powerful trademark search engines that analyze your mark’s chances of registration to knowledgeable assistance in responding to issued Office Actions, there are many benefits to having a trademark attorney on your side when filing an application and securing such a valuable asset for your business. Your company’s intellectual property portfolio is an investment, and it pays to have an experienced trademark attorney anchor your application’s success.