What Do Trademark Attorneys Do?

Trademark attorneys typically do five things:

  1. Identify your company’s trademarks.
  2. Conduct proper trademark searches.
  3. Develop a legal filing strategy for your company’s trademarks.
  4. Draft trademark applications.
  5. Respond to USPTO Office Actions.

In today’s world, you have a lot of internet-based companies that claim they can file your trademark for $69, so why should you hire a trademark attorney?

Here are a few reasons:

1. Trademark attorneys identify your company’s trademarks.

A trademark attorney can help identify the trademarks your company has. While this might seem like a simple process, it often isn’t. For example, you might intend to trademark your company name, slogan, and logo, but what about your individual product and services names, the seminars your company offers, or your product packaging? There are a number of things that can be trademarked, and a good attorney can help you identify which ones you should add to your IP portfolio.

2. Trademark attorneys conduct proper trademark searches.

The second thing a good trademark attorney can do is conduct a proper search on your trademarks before you adopt them as part of your marketing and branding strategies. This way, you don’t waste money on trademark applications that are almost certainly going to be refused and you can identify potential conflicts before it becomes a huge problem.

3. Trademark attorneys develop a proper filing strategy.

The third thing a good attorney can do is help you with a filing strategy for your trademarks. For example, many clients want to register their name, logo, and slogan in on neat package, but this is often not the best strategy.

Take a look at Nike. The name Nike, the Nike swoosh, and the slogan “Just Do It” are three separate trademarks. Filing these marks independently provides greater protection for each element and if any asset changes over time, it will not affect the overall rights of the other trademarks. So, if Nike ever decides to change their swoosh to some other icon, the word Nike will still be protected.

This filing strategy is something that many clients would not be able to develop on their own, because they don’t deal with trademarks on a daily basis. A trademark attorney, however, would be able to provide the best strategy for a client to pursue.

4. Trademark attorneys draft your trademark application.

The fourth item is that trademark attorneys help draft proper trademark applications that meet the technical specifications of the United States Patent and Trademark Office (USPTO).

It’s important to remember that a trademark application is a legal document. While the questions may sometimes seem innocuous, or easy, there’s typically a technical response that’s required in order for the government to be able to approve your application. If a trademark attorney drafts it for you, you’re more likely to see an approval by the government than if you just draft it yourself.

In fact, the University of North Carolina did a study that showed there was nearly a 50% increase in the acceptance rate of applications from people that filed a trademark with an attorney versus doing it without.

5. Trademark attorneys respond to Office Actions and refusals.

The final way a trademark attorney adds value to your application process is by responding to office actions or refusals.

Not all trademark applications go smoothly, and you may receive a refusal for one reason or another. If you receive a refusal because of another potentially conflicting trademark, there’s a number of things a trademark attorney can evaluate and help you do. For example, could we draft an appeal? Could we make an argument to the government that would get around the refusal? Or maybe it’s a little bit more complicated and the owner of the conflicting registration is no longer using that trademark. An attorney can help you evaluate whether or not that trademark could be canceled, allowing your trademark to then proceed.

As you can see, there are many things trademark attorneys do that can be helpful to developing and securing your trademark and intellectual property portfolio. If you have any questions about how our firm can benefit you throughout the trademark application process, please reach out to us through the contact form on our website.

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.

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