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Why hire a trademark attorney?

Why pay a trademark attorney to help with your application for federal registration when you can do it yourself or pay a cheap website service to do it? Fair question. Short answer: because it’s more complicated than it appears, and mistakes can cost you. Even with a trademark attorney, your federal registration application is not guaranteed success, nor are you guaranteed smooth sailing in protecting and enforcing your trademark. But with the help of an attorney, you can avoid some common pitfalls and increase the likelihood of long-term success. For starters, if you live outside the U.S. and want to file a federal trademark registration application with the United States Patent and Trademark Office (USPTO), you are required to do so through a U.S.-licensed attorney. But even if you are domiciled in the U.S., here are a few reasons to consider hiring an attorney to help you.USPTO filing fees are non-refundable, and mistakes can cost you.  There is nothing wrong with making mistakes. That is how we learn. But trial-and-error may not be the best approach to protecting your trade name, especially when the USPTO filing fees are non-refundable and mistakes could leave long-term holes in your trademark protection. Trademark filing fees range from $225 to $400 — per classification of good/service. Depending on how you identify and classify your mark, you may be required to pay additional fees for multiple classifications (which may or may not be advisable or necessary). You may also find yourself having to file additional applications to correct mistakes or identify/classify additional goods or services that you failed to include in the first place. In the end, the greatest concern is the strength and protection of your mark, which may depend on how you file it. Because mistakes add up and some have long-lasting effects, in our view cheap isn’t worth it. Legal knowledge is important.  It is easy to submit a trademark application; it can be done in less than 15 minutes. But it takes time to learn and apply the law. Reviewing relevant registration rules is essential to effectively preparing an application, and fast and cheap filing services may miss some important considerations. For example, imagine you sell several items as a unit, such as a camping essentials kit. The do-it-yourself filer (or ‘legal’ form-filling service online) might properly and logically identify each good with its corresponding classification and pay the several filing fees — one for each class. But an attorney familiar with the relevant rules would know that items sold as a unit can be filed under a single classification (if worded properly) and thus a single filing fee. This is one of many rules that are not obvious to the form-filling filers, but can have a big impact on the cost and consequences of the filing.Little words matter.  It might seem simple, but effectively identifying and classifying goods or services is not as easy as calling a spade a spade. The words used can impact an application and can protect or limit future use of your mark — by you and others. Furthermore, the words used in identifying and classifying goods/services may reduce the fees required based on several criteria (such as the example in reason no. 2, above). No application will be perfect, but carefully chosen words can improve the likelihood for registration and strengthen overall protection for the mark — in addition to potentially reducing costs.Trademark protection involves more than a single application. Once an application is filed, it is reviewed and responded to by a USPTO examining attorney.  It is common for applications to be rejected or require additional action before being granted registered status. But even after a mark is official, protecting and maintaining a trademark registration is an ongoing process. To keep a registration “alive”, the registrant must file certain documents at regular intervals. And trademark rights may need to be enforced or defended as issues arise. The Trademark Office does not represent you.  With hundreds of thousands of new applications each year, and millions of registrations already on the books, the USPTO is not going to help with your application. In fact, they are trying to weed you out. And, as mentioned, the USPTO keeps your filing fee whether your mark gets registered or not, so the office has little financial interest in your success as an applicant. That being said, USPTO.gov provides helpful tutorials and guidelines. But as they make clear, they will not provide legal advice, and they recommend you hire an attorney.The United States Patent and Trademark Office suggests other reasons to hire an attorney — e.g., to help conduct comprehensive clearance searches, helping you understand the scope of your trademark rights and the best ways to enforce them, defending against challenges brought by others against your trademark, responding to questions and refusals to register your trademark from the USPTO, representing you at the USPTO’s Trademark Trial and Appeal Board (TTAB), etc. If you would like help with any of the services noted above, we recommend you speak with a trademark attorney to see if it is something she or he can help you with. Each of these services comes at a cost, but as highlighted above, we think it is worth considering.
 

Disclaimer

These articles are for general informational use and do not constitute legal advice. Since laws change over time, it’s possible some articles are out of date and for that reason, we make no representation that the articles are fully accurate. For actual, up-to-date legal advice (including a free consultation), please contact us!