Filing a trademark application isn’t for the faint-hearted, so to speak, because of the time, energy and effort involved in understanding the trademark law, meeting the requirements of the United States Patent and Trademark Office (USPTO), and dealing with the subsequent actions (e.g., issuance of Office Action). For this reason, you should seriously consider hiring an attorney to take care of these matters in your behalf.
What can an experienced lawyer, particularly one with extensive experience in trademark laws, do for you?
Provide Appropriate Legal Advice
Of course, you can file the application on your own and request the USPTO examining attorney to provide tips that will expedite your application. But the USPTO attorney cannot provide legal advice even if he wants to because otherwise it will be a conflict of interest.
The trademark attorney, in contrast, will provide legal advice regarding your application and its related issues. You can get answers to questions like, “Is the mark protectable by the trademark laws? Are the class of products and/or services that the marks apply to identifiable? Are you able to take appropriate action when the USPTO refuses to register the mark?”
Think of your attorney as your main man in ensuring that your mark becomes registered and protected from infringement by others.
Conduct Searches on the Database
Again, you can search the state and federal databases for similar trademarks as the mark you’re seeking registration for. But it’s such a time-consuming process that you likely won’t have the time and energy for, perhaps not even the patience. Besides, you will likely have other business matters to attend to.
With an attorney on board, you can delegate the task to the professional. Your attorney will search the USPTO database of registered trademarks at the federal level, as well as other databases including the state registration database and the common law unregistered trademarks database. The comprehensive search is a must because even non-registered trademarks similar to your mark and used for selling products and/or services related to yours may well prevent you from registering, using and profiting from your mark, no matter if you think it was your original idea.
Protect Your Trademark Rights
Your attorney can also provide information that will deepen your understanding of your rights and responsibilities as a trademark owner. You will also be provided with relevant advice about the best ways to monitor and enforce your rights and responsibilities, especially in terms of others infringing on your mark. You should also remember that you may also be charged of infringing on other people’s trademarks and your attorney can provide legal assistance on this matter.
The crucial role of your attorney doesn’t stop with the initial application. You can also rely on him or her for meeting the registration maintenance documents, which should be filed on a regular basis. You can then maintain ownership over your mark, a must if you want to continue profiting from it.