By: Serena Minott, Minott Gore, P.A.
Registering a federal trademark may, at first blush, seem like a fairly straightforward form process. But unbeknownst to many DIYers, the trademark registration process at the U.S. Patent and Trademark Office (USPTO) can be quite long and complicated. There are many areas for errors and bases of refusal. And if your application is filed incorrectly and refused registration, you risk losing your filing fees without obtaining registration.
This month, we consider when and why you may need to hire a trademark attorney to guide your trademark process.
1. Trademark Law Is More Complicated Than It May Seem. Trademark law is a highly specialized area of the law subject to specific regulations, unique filing requirements and it is strictly enforced by the U.S. Patent and Trademark Office (USPTO). The USPTO employs an army of attorneys who are well-versed in the nuances of trademark law to review every trademark application filed for registration. If the USPTO uses attorneys, it’s a good idea that you should too.
2. Hiring an Attorney Can Be More Cost Effective. Believe it or not, it can cost less to register your trademark with a trademark attorney than without one. If there are any errors, omissions or conflicting marks when you file your trademark application, the USPTO will issue an Office Action refusing registration of your mark. If the issues are substantive, or in the case of a conflicting trademark, you will likely have to hire a trademark attorney to respond to the Office Action on your behalf. This usually incurs additional fees. Hiring an experienced trademark attorney from the outset usually helps to avoid Office Actions and unnecessary fees during the application process.
3. Better Trademark Searches Improve Your Odds of Success. Trademark attorneys usually start the trademark registration process with a comprehensive trademark search to ensure the mark you want is available for use and/or registration. This significantly reduces the instances of conflicting trademarks already filed or registered at the USPTO, which is one of the top reasons for trademark refusal. While the USPTO offers a free basic search on its website, trademark attorneys, including the attorneys at Flat Fee Trademark, use paid, proprietary databases to search trademarks and employ more intensive search techniques. An experienced trademark attorney can help spot potential issues and conflicting marks before submitting your trademark application.
4. Real Attorneys, Real Legal Advice. Working with a licensed professional trademark attorney means you have someone who can provide legal advice regarding your specific trademark concerns. There are a number of areas where you may need an attorney during the trademark registration process – for example if the USPTO issues a substantive Office Action against your application, or if another party files an Opposition against your mark, you’ll probably need to hire an attorney to represent you.
5. Avoid Infringing on Someone Else’s Mark. A trademark attorney can advise you on using and registering your mark in a manner that will reduce the likelihood of infringing upon someone else’s trademark. It’s important to get your mark registered as soon as possible, but it’s even more important to ensure you have proper rights in the trademark. If someone else is using the same mark or something very similar for related goods or services, you could be sued for trademark infringement. You do not want to be sued for trademark infringement! A trademark attorney can provide guidance on proper use of your trademark to avoid liabilities down the road.
Serena Minott is co-founder and managing attorney of FlatFeeTrademark.com, a service of Minott Gore, P.A. FlatFee Trademark is a full trademark attorney service offering comprehensive trademark search, registration and enforcement services at affordable flat fee prices. Serena may be reached at (800) 769-7790 or snm@minottgore.com.