Trademark Registration: DIY vs Hiring an Attorney

When it comes to registering your trademark, don’t be tempted by DIY legal sites that provide little guidance and assistance throughout the process. Work with an experienced trademark attorney to ensure your trademark application process runs smoothly and quickly.

As you begin the process to register your trademark with the United States Patent and Trademark Office, or USPTO, you may be wondering if you can manage it on your own. Whether you are looking to save a few dollars or you’re simply a DIY person by nature, it’s important to note that the USPTO highly recommends the use of a trademark attorney to complete your comprehensive search and trademark registration. Consider these pros and cons of each approach to trademark registration.

The Do-it-Yourself Approach

It’s understandable that new business owners are budget conscious. From designing a product to marketing and hiring employees, the costs can add up quickly. Because of this, some owners, in an effort to cut costs, may want to take advantage of one of the many legal sites advertising DIY trademark searches and registrations. Unfortunately, while the upfront cost to use these sites may be lower, the decision to register your trademark without the help on an experienced attorney may end up costing you more in the long run.

One reason for this is the comprehensive trademark search (learn how to conduct a trademark search). Before you file your trademark application, you will need to determine if the mark is available for registration. DIY searches done through legal sites, or even Google, are very inexpensive, but they tend to only alert you to exact matches to your trademark. Most trademark disputes, however, do not arise from exact matches, but rather, similar matches to your trademark which may cause confusion in the marketplace. Once you file your application with the USPTO, your assigned examiner will also search for similar matches to the mark. If the examiner determines the mark is already in use, your registration may be rejected. You will then need to invest more time and money as you rework your mark and pay to refile your application at a later date.

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The trademark search is just one of the many challenging aspects of trademark registration. Several detailed legal decisions need to be made throughout the process, including selecting international classes. The USPTO uses the Nice Classification of 45 International classes to determine which goods or services your trademark will represent. Selecting the wrong international class may cause delays in your application process or weaken the protections you hope to receive through trademark registration.

Throughout the application process, the USPTO may issue Office Actions, which may serve to notify you of potential problems or request additional information. Your response must be both accurate and timely, or you risk cancellation of your trademark registration. Managing these requests without the help of an attorney, as well as conducting a trademark search and drafting the application, can be time-consuming, and take away from your focus of building and growing your business.

Working with an Experienced Attorney

While working with an experienced trademark attorney may cost more money upfront, the peace of mind provided far outweighs the cost.  Though the USPTO does not require U.S. citizens to work with a lawyer to file trademark applications, they highly recommend it.  This is because applications drafted with the help of an attorney have fewer issues throughout the registration process.  In fact, a study by the University of North Carolina found that applicants working with a trademark attorney increased their likelihood of approval by up to fifty percent!

Unlike DIY trademark searches conducted on legal sites or search engines, the software used by most trademark attorneys is much more sophisticated.  Not only will they reveal exact matches to your business name, but they will also alert you to similar matches to your business name, logo, slogan, or any other trademark you plan to register.  They will also select the correct international classes for the goods or services you plan to offer.  In addition, most attorneys can respond to non-substantive Office Actions on your behalf, both correctly and on time.  These factors should help to avoid issues with your application once it reaches the USPTO examiner.

Unlike the do-it-yourself approach to trademark registration, partnering with a trademark attorney allows you to focus on building your business.  Instead of conducting a trademark search, you can research target markets for your new product.  Rather than responding to Office Actions, you can respond to potential new employees.  You can also take advantage of the additional services offered by your attorney, including trademark monitoring.  Once your trademark is registered, your attorney can monitor its use, alert you to potential infringement, and work with you to determine the best course of action to take.  It’s a valuable and time-saving tool for any business owner.

The Benefits of Hiring a Trademark Attorney

You’ve likely invested much of your time and money into starting your business, so you’ll want to be sure that investment is protected.  Avoid DIY legal sites advertising inexpensive trademark searches, and contact an experienced trademark attorney to conduct a comprehensive trademark search and draft your application.  Rather than searching the internet for your trademark questions, you’ll partner with a trademark expert who will ensure the process runs smoothly, from trademark searches to international classes and Office Actions.  Contact a trademark attorney to begin the process to register your mark today!

Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 8,000 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

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