An attorney is not required when filing for a federal trademark registration with the United States Patent and Trademark Office. However, they are useful before, during, and after filing of your application. An attorney that specializes in trademark and intellectual property matters has years of experience dealing with all kinds of issues that arise through the trademark process, and this experience helps in anticipating what must be addressed in your trademark application. This experience is something the typical applicant does not have, and therefore, an attorney will help the process along tremendously. It’s not difficult to understand why most applicants choose to use the services of private trademark attorneys.
Before Applying for Trademark Registration
A private trademark attorney can perform a search of all current federal and state trademark registrations that could possibly be confused with your proposed trademark. They can also perform a search of all “common law” (rights based on use of the mark and not on a federal trademark registration) use of the mark. This will help tremendously with the process, as you wouldn’t want any potential costly disputes in the future concerning your use of a mark that has been previously registered or is currently in use. This also lets you know if your mark is likely to be refused before beginning the process of trademark registration.
During the Application Process
Your attorney will be in contact with the USPTO on your behalf and will apprise you of any updates concerning your application. Any problems with your application or refusals to register your mark will be addressed promptly. Years of experience in addressing the Trademark Office’s concerns aids your attorney in understanding exactly what the Trademark Office is looking for and what changes must be made. This cuts down time and effort spent on making edits and addressing all issues at once, rather than continuously receiving notices from the Trademark Office that changes must still be made.
After you Receive your Registration
The USPTO does not enforce trademark rights, and you alone are responsible for making sure your mark is not being used without your authorization. A trademark attorney has experience in trademark infringement matters and has the experience to decide whether or not someone else’s use of your mark constitutes trademark infringement. If infringement is found to exist, a trademark attorney has the gravitas to address the issue with the other party on your behalf.