When and Why You May Need to Hire a U.S. Trademark Attorney

By Josh Gerben, Esq.

A registered trademark is a valuable asset to any business. While registering a trademark may seem fairly simple, the process is actually quite detailed and requires many legal decisions along the way. Choosing to take on this task alone can lead to unnecessary errors, costly re-filings, and even rejection. Whether you are just beginning to create your trademark or you are faced with possible infringement, you may benefit from the expertise of a trademark attorney.

When Should You Hire a Trademark Attorney?

A trademark attorney should be hired when you have an idea for the name of your company.

This is because a trademark attorney should conduct a search on your name and provide an opinion to you on whether or not the name is safe to use.  Far too many business owners fall in love with a name and fail to properly search and clear the name before ordering signage and/or product packaging.  If you are locked into a name before even hiring a trademark attorney, you are taking many of the tools the attorney has available to assist you out of his or her hands.

Why Should You Hire a Trademark Attorney?

You should hire a trademark attorney because a skilled and experienced attorney will give you a significantly better chance of securing a trademark registration than if you file a trademark on your own.

The University of North Carolina completed a study several years ago that found trademark attorneys can increase the likelihood of success of a trademark application by over 50%. The reason for this is that a trademark application is a highly complex legal proceeding even though many online companies and articles make it sound easy. Many business owners are lured into the trap that they can “do it themselves” and not have any significant consequences. The data here is overwhelming and clear, trademark attorneys give business owners a much higher probability of success in obtaining and securing trademark rights then if the attorney is not used.

Engage a U.S. Attorney for a Trademark Clearance Search

The first step to registering a trademark is completing a comprehensive trademark search.  This search is meant to determine whether a confusingly similar trademark exists before you begin your application.  While there are do-it-yourself legal websites offering these searches at an extremely low rate, the decision to go DIY could end up costing more in the long run.  Legal websites and search engines typically only reveal exact matches to your trademark.  Unfortunately, trademark disputes arise not from exact matches, but from trademarks that might cause a likelihood of confusion in the marketplace.  An inadequate search could miss similar trademarks, resulting in rejection from the United States Patent and Trademark Office, or USPTO.

On the contrary, experienced trademark attorneys have the ability to perform a much more comprehensive search.   Instead of simply detecting exact wording matches, trademark attorneys will complete a thorough search of your trademark, whether it be a business name, slogan, or even a logo, and determine if any existing registered marks may be deemed confusingly similar by an examiner at the USPTO.  If your attorney is alerted to a possible match, you can work together to create a path forward to possible registration.

Have a Trademark Attorney Prepare Your Trademark Application

Throughout the trademark application process, countless legal decisions must be made.  Most business owners, while experts in their own field, may not have the legal knowledge to successfully file a trademark application alone.  Trademark attorneys frequently work with registrants that must incur the costs to re-file an application after first filing on their own.  In fact, a recent study by the University of North Carolina revealed that only 57% of trademark applications filed without an attorney were approved by the USPTO.  On the contrary, 83% of applications filed by a trademark attorney were granted approval.  If you wish to register your trademark quickly and efficiently, you should consider working with a trademark attorney.

Part of the trademark application process is determining which International Classes for which to register your trademark.  With 45 International Classes, it can be easy to become confused.  Failure to file the correct International Classes could lead to issues or complete rejection by the USPTO examiner.  With a wealth of knowledge and experience, trademark attorneys can much more easily make the determination about which International Classes to register.  Filing the correct classes the first time allows for a quicker, less costly registration process.

When the USPTO has a question or concern about your trademark application, an Office Action will be filed.  This could be a simple request to amend the application, or it could be notification of rejection.  Office Actions must be dealt with correctly and in a timely manner.  Failure to respond by set deadlines or failure to adequately address the issues in the Office Action may cause the trademark examiner to change the status of your mark to ‘Abandoned.’  Most trademark attorneys include basic Office Action responses in their fees and will respond on your behalf.  Therefore, working with an attorney can give you peace of mind that your trademark application is being processed correctly.

Use a Trademark Attorney’s Assistance to Monitor Your Trademark

While the USPTO registers trademarks, they do no monitor their use in the marketplace.  That responsibility falls on the trademark owner.  Understandably, once business owners register their trademarks, they invest their time and energy into building their brand, not monitoring infringement.  It is, however, essential to your brand that you are aware of those trying to use or profit from your mark.  Fortunately, most trademark attorneys offer monitoring services as well.  They will monitor new USPTO filings, as well as unauthorized use of your trademark.  Working with an experienced attorney means that you can focus on growing your business, not policing your trademark.

If through monitoring, you find possible infringement, it is vital that you take action immediately.  Working with an attorney ensures that you are taking the right course of action against infringement.  Often, a cease-and-desist letter drafted by your trademark attorney is enough to put the violator on notice.  In some cases, however, additional legal action should be taken.  You may also find yourself on the receiving end of a cease-and-desist letter.  A trademark attorney will help you understand your rights and create a plan to resolve the issue.

Whether you are just beginning to think about trademark registration or you are faced with legal issues of infringement, it may be time to hire a trademark attorney.  From conducting comprehensive trademark searches to responding to Office Actions and more, an experienced trademark attorney can help to protect your brand while you work hard to build it.  No matter where you are at in the trademark registration process, it is never too late to reach out for professional assistance.

If you’re ready, Contact Gerben IP Today to get started. Also, check out our post on how to choose the right attorney for your trademark.

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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.