What Can a Trademark Attorney do for Your Business?

By Josh Gerben, Esq.

If you are a business owner looking to protect your brand, consider working with an experienced trademark attorney. Your attorney will conduct a comprehensive trademark search and also file your application with the USPTO and respond to Office Actions on your behalf. Once your trademark is registered, your attorney can monitor its use and work with you to take legal action against infringement.

Conduct a Comprehensive Trademark Search

A trademark search should always be conducted prior to filing an application with the United States Patent and Trademark Office, or USPTO. It’s done to determine whether the trademark you plan to register is already applied for or registered by another company.

While there are DIY options for conducting a trademark search, they typically only reveal exact matches to a trademark. Most trademark disputes, however, aren’t caused by exact matches, but rather trademarks that may be confusingly similar. The search software used by most trademark attorneys is much more comprehensive, revealing not only exact matches to your business or product name, but similar matches to any words, logos, or slogans you wish to trademark.

It’s certainly frustrating to learn of an existing trademark, but it’s best to learn that before you submit your application and pay your fees to the USPTO. If your attorney finds a similar mark that may become an issue during the registration process, you can work together to make the changes needed to avoid the likelihood of confusion. 

Depending on the severity of the conflict your attorney may suggest some minor changes to your proposed trademark or suggest going back to the drawing board to create a stronger trademark before filing.

File Your Application with the USPTO

Once your comprehensive trademark search has been conducted, your trademark attorney will begin to draft your application for the USPTO.  While filing with an attorney isn’t required for U.S. citizens, it’s highly recommended, because of all the detailed legal decisions that need to be made throughout the process. 

In addition, a recent study by the University of North Carolina found that applications filed by attorneys increased the likelihood of approval by up to fifty percent! Therefore, choosing to work without an attorney could be a costly and time-consuming mistake, if your application is rejected by the USPTO and you are forced to refile.

The USPTO commonly issues Office Actions throughout the application process. These can be requests for additional information or clarification or a full refusal of an application due to a conflict with another trademark. 

When you receive these Office Actions, it’s important to respond appropriately and meet the deadline provided. Failing to do so could cause abandonment of your application. 

Fortunately, your trademark attorney can typically respond to all Office Actions on your behalf, ensuring your application process moves as quickly as possible while saving you time to focus on your brand.

Police Your Trademark

The USPTO registers trademarks, but they do not enforce their exclusive use. That responsibility is on the trademark owner. In order to maintain control of your trademark and manage the reputation of your brand, it is important to monitor its use in the marketplace. 

This can be a time-consuming task, especially for business owners focused on growing a successful brand. Fortunately, most trademark attorneys offer monitoring services to their clients. Your attorney will be able to take on the task of monitoring the unauthorized use of your mark and alert you to any potential infringement.

If potential infringement is found, either by you or your attorney, it is critical to take action to stop it.  Experienced trademark attorneys will analyze each unique incidence of infringement and then develop a plan to take action. In many cases, a cease-and-desist letter drafted by your attorney is often enough to put the infringer on notice. 

In some situations, however, your lawyer may recommend a more formal legal action. Either way, your attorney will work to ensure that the infringement stops and your business is protected.

Additional Services Offered by Your Trademark Attorney

Trademark attorneys are most often utilized for registration and monitoring services, but most offer additional services that can benefit your business. Some of these additional services include:

• Change of Ownership
• Renewal Filings
• Licensing Agreements
• Opposition Proceedings + Cancellation Proceedings
• Litigation
• Patent Services + Copyright Services

Working with an Experienced Trademark Attorney

Don’t be tempted to take the do-it-yourself approach to registering trademarks. While you may spend a little more to work with an experienced trademark attorney, the value far exceeds the cost. You’ll receive a comprehensive trademark search, which will allow you to move forward with registration, knowing that no confusingly similar marks are in use. Your attorney will draft and submit your application to the USPTO, as well as respond to non-substantive Office Actions on your behalf. 

Once your mark has been registered, consider using the monitoring services offered by most trademark attorneys, to be alerted to possible infringement, and work with your attorney to determine the best course of action to stop the infringement. While you remained focused on growing your brand, your trademark attorney can ensure that brand is protected.

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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 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.