Clients sometimes ask: “Do I need a lawyer? Or can I register a trademark on my own? First, the basics. What does the Trademark Office do? It reviews trademark applications and determines whether the applied-for marks meet the requirements for national registration. So in simplest terms, it registers trademarks. The office says “Yes” or “No” as to whether you may use the “R in the circle” symbol after your trademark, the indication that your mark has been registered with the USPTO.
However, the USPTO does not provide legal advice. For legal advice, you need to hire a private practice attorney who concentrates on trademark law.
The USPTO does not decide whether you have the right to use a mark. In addition, it does not conduct trademark clearance searches for the public. If you want to see if anyone is in line ahead of you with a mark that conflicts with your mark, a search is required. It is recommended to use an attorney to search for you. The only time the USPTO searches a mark in the its database is after you have filed your application as part of the process of examining your application.
The USPTO also does not answer questions about whether a particular mark or type of mark is eligible for federal registration before you file. Answering those questions requires a complete legal review of your application and your application filing fee covers the cost of that review. Therefore, the USPTO only lets you know whether your mark can be registered after you have filed an application and paid the non-refundable filing fee. Save yourself a lot of time and fees by having an experienced attorney help prepare the application.
The USPTO does not comment on the validity of registered marks. It will not discuss whether a particular application should or should not have registered. It does not offer legal advice or opinions about common law trademark rights for marks in use but not registered with the office. The same is true for state trademark registrations and legal actions based on trademark infringement claims.
It also does not assist you with recordation of your mark with U.S. Customs and Border Protection, which is a step that may help prevent the importation of counterfeit goods.
And, most importantly, the USPTO does not enforce your trademark rights. It is your legal responsibility to police your trademark and to protect it from infringement. Only you may bring legal action against others infringing your mark.
That means you have a lot of responsibility. From coming up with your own mark to doing a pre-filing search for conflicting marks to completing the application process to maintaining and protecting your mark after registration, there are a lot of things to do to register a mark and keep it alive.
For that reason, many applicants ask if they should hire an attorney to help. For U.S.-domiciled applicants, it is strongly recommended that you hire a private trademark attorney to help you. For foreign-domiciled applicants, you must hire an attorney, licensed to practice in the United States, to represent you at the USPTO.
Filing a trademark application at the USPTO starts a legal proceeding that may be complex and requires you to comply with all of the requirements of the trademark statute and rules within strict deadlines. It’s not as easy as applying for a driver’s license. More like filing a tax return by hand.
A private trademark attorney, though, can help you before, during, and after the trademark application process. That is, an attorney will often shorten the overall registration process, help you avoid pitfalls along the way, increase your likelihood of obtaining a registration, and help you police and enforce the trademark registration that may issue from your application.
For example, an attorney could save you from future costly legal problems by conducting a trademark search before filing. This is known as a “clearance search” and includes searching federal and state trademark registration databases for potentially conflicting marks. It also involves a search for common-law unregistered trademarks by searching the Internet for websites and stories involving similar marks being used for goods and services related to yours.
Comprehensive clearance searches are important because other trademark owners may have superior legal rights in trademarks similar to yours even though they are not federally registered. Therefore, those unregistered trademarks will not appear in the USPTO’s Trademark Electronic Search System database, but could still ultimately prevent you from being able to use your mark, even if the USPTO registers your mark.
An attorney can also assist you if your mark is involved in a legal proceeding before the Trademark Trial and Appeal Board, or “TTAB.” The TTAB is like a court (with a panel of judges) and handles cases in which applicants have appealed the office’s refusal to register their marks. The issues become very complex at this point and a private attorney is highly recommended.
And, after registration, a private attorney can help make sure that all required maintenance documents are timely filed years later, so you can keep your registration alive for as long as you use your mark.
An attorney can also help you understand the scope of your trademarks rights and advise you on the best way to police and enforce those rights, including what to do if other trademark owners allege that you are infringing their marks. Remember, enforcement of trademark rights is your responsibility, not that of the USPTO.
If (or when) you hire a private attorney, make sure to find somebody who focuses in trademark law. Don’t just respond to the first solicitation you receive and don’t be confused by “trademark registration” companies that you find online. Only an attorney should assist in preparing a trademark application.