Do I Need a Lawyer to Register a Trademark?

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A lawyer is not required, but hiring legal counsel is strongly recommended for the process of registering a trademark.  While trademarks may be registered with the United States Patent and Trademark Office ("USPTO") as well as with your state's trademark database, this article focuses on registering with the USPTO.

To review, a trademark is generally a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods or services of one party from those of others. (The word "service mark" is often used to describe a trademark that identifies services, but the words are colloquially interchangeable. The word "mark" is serviceable to describe both.)

Any person, whether she is or is not a lawyer, can register her own trademarks with the USPTO.  The initial application as well as subsequent filings can be completed and submitted online by visiting the USPTO website (www.uspto.gov).  The filing fee is either $325 or $275 for an initial application (if filed electronically), depending on how you intend to describe the goods and services your mark is associated with.  If you wish to register a mark within multiple categories of goods and services, you will need to submit additional applications for each applicable good or service category.

Much of the registration process is simple, but certain aspects of the registration process are best handled by an attorney.  First, if you plan to invest or have invested substantial resources cultivating your mark and brand, you may wish to have an attorney perform a trademark database, search engine, and other database search.  These searches may reveal that other marks are in use for such a purpose and of such a nature that your mark might be considered an infringement on the existing mark's use (whether or not the trademark is registered).  These types of searches are more effective if the person performing the search is familiar with the infringement elements of the Lanham Act (federal trademark infringement statutes) and the facts of the cases explaining those elements.  An attorney will be able to advise you if you should consider another mark, and will be able to inform you of the risks involved in proceeding with your current trademark.  This could be significant if at a later time, after you have expended substantial resources buidling goodwill in your marks and brands, you are faced with an infringement suit (or a cease and desist letter) and are forced to pay damages, discontinue the use of your trademark, or both.

Second, trademark registration applications must go through one or more examining attorneys whose job is to review applications and make sure the content of the application is acceptable, including the description of the goods and services and the eveidence you must submit to prove that you are using your mark (called a "specimen").  Even for experienced trademark attorneys, it is common for the examining attorney to deny applications or require certain changes to be made.  If your application is denied upon the intial review of the examining attorney, you have the option of contesting the position of the examining attorney.  If you are represented by an attorney, she will be able to effectively apply the relevant trademark laws to the facts surrounding your application.  If the examining attorney's position is challenged by a licensed attorney, your legal position is more likely to be viewed as a credible interpretation of the statutes and cases that are applicable.

Third, you may need some assistance choosing the correct goods and services categories.  All goods and services are assigned to two sets of categories; one based on categories for United States trademarks, and one based on international categories.  It is crucial you choose the correct category for your good or service in order to receive maximum protection.  Oftentimes, it is difficult to tell exactly which category your mark belongs in, as the categories contain limited or seemingly inconsistent examples of what belongs in each category.  An experienced trademark attorney will likely have good judgment as to which category or categories a more nuanced good or service belongs in.

Fourth, you may want advice as to the quality of your mark.  An attorney will be able to provide such an evaluation.  The more generic or descriptive your mark is, the less likely it will offer you protection against future infringement.  If your mark is more arbitrary or faciful, you will probably receive better protection.  For example, if your mark is "socks" and the good you are offering is in fact socks, the registration of that mark (if permitted) will not give you much infringement protection.  If, on the other hand, you mark is "socks" and the good your are offering is, say, herbal tea, it is more likely the mark is given stronger protection.  Also, the strength of your mark is determined by factors such as how recognizeable your mark is, what markets your competitors are in, and the similarity of the goods or services offered by you compared with the goods and services associated with a similar mark, among other factors.  Whether your mark is descriptive or fanciful is a fact-intensive inquiry explored by decades of case law.

A word to the wise about fees.  If you choose to hire an attorney, be weary of fees that are substantially lower than what other attorneys or law firms are charging.  These types of arrangements may exclude legal advice as to the desireability or risks of registering your mark, or whether your mark is protectable.

The facts of each case vary.  Some registrations are quick and easy, others require substantial communications with the examining attorney and end up being denied registration.

From the author: Nichols & Rabuck, P.C.
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