Filing a trademark application with the USPTO starts a legal proceeding. And like all legal proceedings, it can be very long and complex. Having a detailed, clear and error free trademark application may make or break your chances at trademark protection.
The USPTO requires that each trademark and its application comply with federal law. For that reason alone, it is wise to hire an attorney with trademark and intellectual property knowledge. An attorney does more than fill out paperwork for you. They will help you navigate the trademark application process and to work with the USPTO attorneys to ensure its approval.
Before you even file an application, an attorney will give you advice as to the strength of the mark, the best intellectual property protection and how to prevent any future infringement or dilution.
If you try to do it yourself, or use a document preparation services (like Legal Zoom or Trademarkia) to prepare the application, you may get the initial application in just fine. But for most applications, the USPTO’s attorneys send back requests for changes or information (anything from a minor “office action” to change a single word, to an outright rejection). When that happens, you cannot just call up the USPTO trademark examining attorney to ask for legal advice. They are explicitly instructed to not give you any legal advice. The USPTO examining attorney may try to help you understand the process, but they will not necessarily tell you everything or explain to you how to comply and avoid a rejection.
So what does an attorney do for you?
First, as already mentioned, a lawyer will help you analyze your mark to determine that you are choosing the best and strongest mark to not only represent your business, but is strong enough to deter potential future infringement. This includes properly identifying and classifying your goods and services with the USPTO. A lawyer will also assist you by preparing responses to any refusals that the USPTO examining attorney issues while your application is pending — this is something you will not get from a document preparation service.
Second, a lawyer will conduct a comprehensive search of federal and state registrations, and unregistered trademarks all before your trademark application is filed to ensure that all potential legal issues have been analyzed before the USPTO ever examines your application.
Comprehensive searches are vital because other trademark owners may have stronger legal rights regarding marks that are similar to yours even though they may not be federally registered. Because they are not registered, these types of “common law” marks will not appear in the USPTO’s search system but could prevent you from using your mark. This is true even if the USPTO registers your mark.
Again, a document preparation service will search the USPTO’s service but won’t do the extensive “common law” mark search. This is because such a search is time-consuming and requires an experienced legal practitioner. Such a search can never be perfect, but it can be pretty comprehensive. An attorneys can help you look for possible problems before you file that application so that you can make the most informed decision for your business.
Finally, a lawyer can advise you on the best way to police and enforce your trademark rights. This may include licensing your mark, protecting against any potential infringement action, deterring counterfeiting and copying of goods and services and any other potential legal dispute that could arise while protecting your trademark.
If you do not police your mark, you can lose it!
The next post in this series explains in more detail the trademark application process.
If you are interested in protecting your trademarks, check out Bellatrix PC’s Trademark Packages and get started today.