3 Reasons to use a Trademark Attorney

As you probably know, I am an attorney. I try not to be biased in my opinions, but you be the judge. Here are 3 reasons why I think it makes sense to have an attorney assist you in the trademark application process.

1. Registering a Trademark is a legal proceeding.

Your trademark application is sent to the USPTO and is reviewed by an attorney employed by the USPTO who will either approve it, deny it, or request additional information. Additionally, if the USPTO approves the trademark, it will be published for opposition. This means the public will have an opportunity to review your application and oppose it. If it is opposed, it becomes a contested legal matter to be heard before the Trademark Trial and Appeals Board (TTAB). An attorney can help you evaluate and handle the risks of having your trademark application opposed.

2. Informed Opinion During Trademark Limbo

You will not get a response from the USPTO for many months. It could be anywhere from 6 to 10 months. I call this trademark limbo. What are you doing while your trademark processes? Are you spending time or money developing the business? What happens if you do that and you find that the USPTO will not approve your trademark, or that they find your trademark is confusingly similar with an existing trademark? Again, these are legal conclusions reached by lawyers. Do you then start over?

A trademark attorney can provide you with an opinion on your trademark in advance. This opinion will help you make a better decision on whether you want to use that trademark and spend time and money developing the business and brand. Alternative, you may decide that you want to wait-and-see if the trademark is approved or try for a less risky trademark.

Thus, instead of waiting for 10 months to find out whether your trademark is bad, you can find out basically right away. If you do want such an opinion, you will have to discuss with your attorney how detailed you want the opinion to be–meaning how exhaustive you want the trademark search to be and how important it is to get the answer right.

3. Minimize risks of Infringement

You don’t want to infringe on another person’s trademark rights. Working with an attorney can help you evaluate whether the trademark you want might infringe on another person’s prior right. Additionally, in the event of a disagreement, obtaining such an opinion can show that any infringement was not a willful infringement.

What an attorney cannot do

A trademark attorney cannot guarantee that your trademark will be problem free. For instance, one attorney may find that a trademark is confusingly similar to another where a different attorney might not. Reasonable minds can disagree. Your trademark attorney may also search federal, state, and common law trademark sources and determine that your trademark appears to be clear, but someone who owns a different trademark might disagree. This person could even be wrong and still contest your trademark application.

The point is that the purpose of going to an attorney is to both understand and minimize potential risks. There really are no guarantees in trademark law. Even if the trademark office approves your trademark for registration, it can still end up being challenged through a cancellation proceeding. As such, a trademark attorney can provide you only with an opinion and not a guarantee.

About the picture

We went on a hike and saw some bald eagles (I think) flying overhead. My daughter commented, “This is a great day for America!” or something like that. She was right!

Leland Faux
Attorney Leland Faux blogs about trademark, copyright, and online business issues at Law of the Brand. You can submit a question by email to thelawofthebrand@gmail.com.

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