When registering for a Federal Trademark, it's highly encouraged that you consult and hire a Trademark Attorney during this process.
By reading and following this guide, you'll be informed about the some of the reasons why you should seek legal help.
1. Specialty Area of Law
Law in the U.S. is a vast spread of different topics and matters that each require specific knowledge.
When it comes to trademark law, it's difficult to succeed unless you know all of the ins and outs of the field.
The best way to make sure you have the right expertise on your side is to hire a trademark attorney.
Instead of resorting to external resources, work directly with an experienced lawyer whose been through the trademark process before.
Though hiring a lawyer will add to your total costs and expenses, it's totally worth the money in the long run.
2. Costly Money On The Line
Now you may be wrestling with the fact that opting to hire a Trademark Attorney will cost you more money--at least at first glance.
But you need to go into the process fully aware of the costs involved.
Simply registering your trademark runs you anywhere from $250 to $350 (per international classification) depending on which form you choose to use to register your mark.
- TEAS Plus Form is $250 per class of goods/services
- TEAS Standard Form is $350 per class of goods/services
However, you should recognize that for every mistake that's made on your application, or if you miss a deadline or receive an office action, additional fees may follow.
By hiring an experienced attorney, your lawyer will likely save you money by helping you avoid expensive pitfalls.
Unfortunately, we frequently hear from potential clients after they've already failed to properly register or have received an office action.
Generally, these situations, and their additional fees, could have been avoided.
Another reason a Trademark Attorney will save you money is that there are no refunds for any payments you make during the registration process.
This rule stands regardless of the USPTO's decision to grant you a mark or not.
So you won't be able to get your money back if things don't go as planned.
Discussing your trademark goals with a lawyer will help make sure that things do go as planned, and that you register your trademark the right way.
3. Legal Jargon
Because trademark law is complex and has developed on its own special vocabulary, it's critical that you have a lawyer who is able to break down every aspect of the process and explain things in plain English.
This is important because legal jargon has a tendency to be confusing to those outside of the legal realm.
This holds true even for other lawyers who don't practice trademark law.
Also, the USPTO's registration application requires you to be very precise and accurate in your filings.
For example, if you decide to register using either the Plus or Standard forms, you must meet each application’s unique requirements and file specific submissions online.
Another key element of hiring an attorney is their ability to help you determine whether you should register your mark on the Principal or the Supplemental register.
An attorney can help you figure out if your trademark is legally distinctive, or if it's merely descriptive.
While these terms sound like small differences, they mean a world of difference in trademark law. Those kind of distinctions will affect how you proceed.
Because of this legal jargon, the USPTO's online registration form sometimes causes applicants to make costly mistakes during this part of the registration.
If you hire an attorney you won't have to worry about these kinds of mistakes.
4. Avoiding Trademark Disputes
Before registering your trademark, you want to make sure that you won't be headed towards any kind of expensive trademark disputes.
Specifically, you want to avoid accidentally infringing on someone else's trademark, and you want to do what you can to avoid opposition proceedings.
The best way to make sure your trademark won't have a conflict with an existing trademark user is to obtain a search report.
A good trademark search will scan the USPTO records, but it will also include sources like the Internet, magazines, databases, and newspapers to make sure there is no confusion about your trademark's usage and distinctness.
Because you perform the search before registering with the USPTO, you can make sure your trademark registration will be in the best position possible.
This way, rather than run the risk of the examining attorney finding costly mistakes, or having another trademark user oppose your use of the mark, you'll reduce that risk by hiring an attorney.
With that said, you do have the option of doing your own search.
However, this can be extremely difficult due to limited access, your ability to assess the results, and your time.
Save yourself the headache, do yourself a favor, and hire an attorney to protect your trademark.
Lastly, a Trademark Attorney helps you figure out what exact international classification to register your mark in.
By registering under the proper classification, you'll limit any confusion with other brands.
5. Prevention of Mistakes and Office Actions
As mentioned earlier, mistakes on your application can prove costly.
When they find issues in your application, the USPTO will send you an Office Action.
Office Actions detail issues about an applicant's case and various reasons why they could have reason for rejection.
Office Actions also list the things you must do in order to rectify your application and finalize registration of your mark.
When its sent, you have six months to respond with an improved application.
One of the trials of the USPTO registration process are its strict deadlines.
If you don't turn in important materials on time, you will face a fine.
In an effort to stop this from happening, work with a lawyer to make sure you're staying on top of everything.
During the registration process, competing businesses may try to prevent your application from going through.
Parties argue against you on various grounds by opening opposition proceedings.
If this happens, you would have to prove why your mark should be registered in the face of opposition.
Chances are, you're going to need a lawyer to do it if you plan to succeed.
By hiring an attorney early on you should be able to keep this form happening to begin with.
Conclusion
Seeking legal help during the trademark registration process has a lot of advantages.
Not only will you have someone to walk you through each step, you'll also be able to learn a lot about how trademark law can help strengthen your brand.
Such knowledge will help you and your business significantly down the line.
