Clients often ask whether they can file their own trademark application. The answer is always, “of course.” However, they can also change their own oil, make plumbing repairs, and prepare their own taxes. The better question is, Why should I hire a trademark attorney?
Here is the value proposition:
When clients ask about filing a trademark application or anything else for that matter, it seems like they are only considering the process itself rather than trademark law. Filing a legally weak trademark properly and getting it approved can be much more devastating than making a process error in filing a legally enforceable trademark.
A trademark attorney can help clients in creating or selecting the trademarks that are legally enforceable against infringement. They can also help in choosing the most appropriate classes for the mark, describing the mark with sufficient detail, and with understanding the process. Once the word(s) or image(s) are filed, the USPTO decision may not be a simple “yes” or “no.” The USPTO examining attorney can issue Office Actions after their review that require responses, which can be legal in nature. An attorney can help mitigate the chance of an Office Action from the onset, but Office Actions are common. In such case, an amendment to the filing may be required. Having an attorney already working on a company’s behalf can streamline the resolution because the trademark attorney can discuss and negotiate the appropriate changes necessary to satisfy the examiner to obtain approval and ultimatetely registration of the mark.
Trademarks represent the brand of a company and can become very valuable intellectual property over time. The initial brand decision is usually one of the first things a new business considers. Obtaining the advice of a trademark attorney can be helpful for creating a name or image that is enforceable as well as for handling the process efficiently so the business can spend its time on selling its products and services.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.