what is a trade mark attorney

Full Answer

Why use a trade mark attorney?

On this page

• Am I required to hire a U.S.-licensed attorney to represent me at the USPTO?
• What can an attorney do for me?
• Why must my attorney be licensed to practice law in the United States?
• How do I find a U.S.-licensed trademark attorney?
• How do I know if the attorney or filing firm I hired is legitimate?

What is a trademark lawyer?

• Arbitrary or fanciful. If a mark is considered arbitrary or fanciful it is inherently distinctive. ...
• Suggestive. A mark that is categorized as suggestive is also considered inherently distinctive. ...
• Descriptive. If a mark is considered descriptive, it might be protectable under trademark law. ...

Do trademark lawyers matter?

Do Trademark Lawyers Matter? Aug. 29. by BCS. This is not an existential question, but the title of a new research study by Deborah Gerhardt and Jon McClanahan, soon to be published in the Stanford Technology Law Review, 2013. It is no secret that non-lawyers can file federal trademark applications, just as individuals can incorporate companies ...

How much does it cost to register a trademark?

While filing for a trademark, USPTO fees are based on three options:

• Option 1 -- $225 for TEAS Plus filing per class of good or services. This option has the strictest requirements.
• Option 2 -- $275 for TEAS Reduced, which involves fewer requirements.
• Option 3 -- $400 for TEAS Regular, which does not have any additional requirements in comparison to the options above.

What is a trademark in legal terms?

Definition. A trademark is any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods.

What does a trade mark do?

A trademark: Identifies the source of your goods or services. Provides legal protection for your brand. Helps you guard against counterfeiting and fraud.

What is the role of the TTAB?

The Trademark Trial and Appeal Board (the TTAB or the Board) is a neutral body that functions like a court for trademark matters at the USPTO. The Board's administrative trademark judges are authorized to determine a party's right to register a trademark with the federal government.

What is a trade mark attorney UK?

Trade mark attorneys are specialist legal professionals that advise clients about protecting and enforcing their trade mark rights.

What does a trademark protect against?

A trademark protects a good or service offered by a company from infringement or damage of reputation by another company. With a trademark, you have legal recourse to sue another company that uses your likeness to further their own business ventures.

Who needs a trademark?

Business owners that have a distinctive business name, motto, logo, slogan, symbol to represent their product, service or business may want to consider registering it as a trademark from the U.S. Patent and Trademark Office, or USPTO, a federal agency, and/or a similar state agency.

How do I find a TTAB case?

Use the Reading Room to search TTAB final decisions and precedential orders. You can search cases by date, issue, and other criteria. You can also search by language within the decision. Please send comments, questions, and suggestions to [email protected] .

Where is the TTAB located?

Arlington, VirginiaPatent & Trademark Office The USPTO is located in Arlington, Virginia, it is about a fifteen minute Metro ride from the Reagan National Airport.

What is a TTAB USPTO?

The Trademark Trial and Appeal Board (TTAB) handles appeals involving applications to register marks, appeals from expungement or reexamination proceedings involving registrations, and trial cases of various types involving applications or registrations.

Are trade mark attorneys lawyers?

A Chartered Trade Mark Attorney is a lawyer who is specifically qualified to advise on trade mark law and acts as an agent for the purposes of applying for and obtaining trade mark registrations.

Is it hard to become a trademark attorney?

It will be an intensive couple of years. Once qualified, you will be on the Register of Trade Mark Attorneys, and can apply to CITMA to become a Chartered Trade Mark Attorney. You will need to complete 16 hours of continuing professional development (CPD) a year to maintain your place on the register.

How do you qualify to be a trademark attorney?

One can enroll as an advocate in any of the State Bar Council, after obtaining their LLB degree. The attorney must be registered to practice trademark laws before the IPAB (Intellectual Property Appellate Board) of the Trademark office and must also be registered to practice law in at least one of the states in India.

2. Trademark attorneys conduct proper trademark searches

The second thing a good trademark attorney can do is conduct a proper search on your trademarks before you adopt them as part of your marketing and branding strategies. This way, you don’t waste money on trademark applications that are almost certainly going to be refused and you can identify potential conflicts before it becomes a huge problem.

3. Trademark attorneys develop a proper filing strategy

The third thing a good attorney can do is help you with a filing strategy for your trademarks. For example, many clients want to register their name, logo, and slogan in on neat package, but this is often not the best strategy.

4. Trademark attorneys draft your trademark application

The fourth item is that trademark attorneys help draft proper trademark applications that meet the technical specifications of the United States Patent and Trademark Office (USPTO).

5. Trademark attorneys respond to Office Actions and refusals

The final way a trademark attorney adds value to your application process is by responding to office actions or refusals.

What degree do I need to become a trade mark attorney?

Trade mark attorneys may have an arts degree or a general legal background before specialising as a trade mark advisor.

Is it a crime to use a registered trade mark attorney?

It is a criminal offence for anyone to use the term “Registered Trade Mark Attorney” or “Registered Trade Mark Agent” unless he/she is on the trade mark attorney register (Trade Marks Act 1994, s.84 ).

Can trade marks overlap with design?

Trade marks can also overlap with design and copyright matters. They also deal with conflicts and infringements of their clients’ trade mark rights. Many trade mark attorneys also practise in the field of industrial designs.

What Do Trademark Attorneys Do?

When a company uses a name, logo, or slogan in commercial activity, they acquire a common law trademark. To receive a higher level of protection, they can register that trademark. A trademark attorney specializes in the proactive protection and legal defense of this intellectual property.

How to Become a Trademark Attorney

To become a trademark attorney, you need a Master of Laws degree. That means you must first complete a Juris Doctor program from a school approved by the American Bar Association, then apply to an LL.M. program that focuses on trademark law.

What can an attorney do for a trademark?

Attorneys can provide crucial legal advice. An attorney who is licensed to practice law in the U.S. and experienced in trademark law can advise you about many important legal issues. These include: Determining if your chosen trademark can be legally protected.

What can an attorney do after trademark registration?

After registration, an attorney can also help ensure that all required registration maintenance documents are timely and accurately filed, so you can maintain your registration for as long as you use your trademark . Attorneys can represent you at the USPTO's Trademark Trial and Appeal Board.

Why do trademarks need to be followed?

trademark law and USPTO regulations must be followed because they govern the trademark registration process before the USPTO, proceedings before the Trademark Trial and Appeal Board, and the conduct of attorneys who practice before the USPTO. We take the unauthorized practice of trademark law very seriously.

What are legal services?

Many private companies offer legal services, such as assistance with filings or responding to an office action, or other services. Such services may be legitimate if provided under the supervision of a licensed U.S. attorney.

Can an attorney help you enforce your trademark?

Other sources for common law rights unregistered trademarks. This search occurs before filing your application. Attorneys can help you enforce and maintain your trademark rights. It's your legal responsibility to monitor and protect your trademark from infringement by other parties.

Why are trademark fees higher?

If you hire an attorney, be aware that your application fees will remain the same, but your overall costs of filing a trademark application will be higher because you’ll also have the cost of your attorney’s services.

What are the benefits of hiring an attorney?

Benefits of hiring an attorney include: Providing you crucial legal advice about your trademark. Conducting your trademark clearance search before you file an application. Preparing your application accurately. Responding to legal correspondence from the USPTO. Enforcing and maintaining your trademark rights.

Do I need an attorney to trademark?

Not everyone is required to have an attorney. If you are a foreign-domiciled trademark applicant or registrant, you must have a U.S.-licensed attorney represent you. If you’re domiciled in the United States, you’re not required to have an attorney.

Does hiring an attorney save you money?

However, in the long run, hiring an attorney may save you money because an attorney will know how to best advise you on your trademark’s registrability, prepare your application, and respond to the USPTO on various issues that might arise throughout the process.