Do I Need an Attorney to Apply for a Trademark?

Potential legal hurdles in the trademark application process

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A trademark represents a business owner's exclusive right to use a name or logo in connection with a particular good or service. Unlike a business name, which is typically registered with the state as part of the incorporation process, a trademark is subject to federal law. Specifically, a business must file a trademark application with the U.S. Patent and Trademark Office (USPTO) in order to receive the federal protections for that mark.

Dealing With the USPTO

Strictly speaking, you do not need a lawyer to handle your trademark application. A sole proprietor or business owner may represent themselves before the USPTO. But is that really a good idea?

“As with most things, you could go online and find guides to doing these things,” says David Swenson, an IP attorney with Larkin Hoffman in Minneapolis. “Even the USPTO has a step-by-step walkthrough, but even there they’re careful to say, ‘It might be a good idea to get a lawyer because it’s really difficult and you could bite yourself if you don’t do it right.’”

Here are a few things to consider.

The Search

First, an application may be rejected if it interferes with an existing trademark. Many business owners fail to conduct a proper search of existing of existing trademarks before filling out their application. Some people just assume that they are the only business owner using a particular name or mark in connection with their type of product or service.

“That’s really hard for the average person to do because it’s not just the USPTO database, but common law trademarks and state trademarks,” Swenson says. “An attorney will know how to do a more comprehensive search, as well as how to interpret the search results. You need to know if a mark that’s similar to yours could present a problem.”

The Scope

Second, your trademark application may not be broad enough in its scope. Consider that a given trademark may identify dozens—even hundreds—of products associated with a particular brand. You want to make sure your application includes a complete list of all the goods and services you want to cover. Trademark attorneys have a good deal of experience in not only preparing such lists, but also ensuring they will be accepted by USPTO examiners.

“There are nuances to all of this and trying to figure out which class your goods and services are in is something to be very careful about because that’s how your trademark will be judged ... and if you didn’t do the correct class, you may leave the door open for someone else to come in later,” Swenson says.

The Selection

Third, you need to consider whether you are selecting the right trademark for your business. Sometimes business owners become attached to a particular name without stopping to assess whether it makes legal or financial sense. A trademark attorney can provide an objective evaluation of a trademark's potential strength and, if necessary, advise on the selection of a stronger mark.

“In dealing with the examiners, sometimes in their rejections there are comments that will suggest ways to change your mark that may make it allowable. But the examiner doesn’t necessarily have your best interests in mind,” Swenson adds.

And speaking of rejections…

The Re-Submission

The USPTO can reject a trademark for a number of substantive or technical reasons. Typically a USPTO examiner will send an “Office Action” notifying the applicant of the reasons for rejection and giving you six months to respond to any issues raised. Having a trademark attorney by your side who understands this process can make the difference in ultimately securing registration for your mark.

And even after you secure a trademark, an intellectual property attorney can advise and assist you with ongoing enforcement. Unlike copyrights or patents, trademarks will last indefinitely provided they are actively enforced. Additionally, if your product or service goes international, a trademark attorney can help secure mark rights in other countries.

“An attorney who’s experienced in this area is going to be much more conscious about properly docketing things that come up—deadlines, dealing with the PTO, fees. I don’t mean to say a very diligent, orderly person or business can’t do some of that themselves, but it’s something an attorney is more experienced at and does in the regular course of their practice,” Swenson notes. “They’re far less likely to make a mistake that gets you into trouble later.”

Minnesota

When applying for a trademark, it is important to list all of the potential goods and services you wish to associate with the mark. “There are nuances to all of this and trying to figure out which class your goods and services are in is something to be very careful about because that’s how your trademark will be judged ... and if you didn’t do the correct class, you may leave the door open for someone else to come in later.”

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