when filing a trademark is it necessary to use an attorney

Do I need a lawyer to file a trademark application?

Sep 16, 2021 · If you’re domiciled in the United States, you’re not required to have an attorney. To determine whether you’re required to have a U.S.-licensed attorney, you must provide and keep current your domicile address in trademark filings. Even if you’re not required to hire a U.S.-licensed attorney, consider whether or not you should.

What does a trademark lawyer do?

Sep 10, 2019 · While it is not a requirement for U.S. citizens to hire an attorney when registering a trademark, the USPTO highly recommends working with an attorney to prepare and file your application. This is because of the vast number of legal decisions that need to be made throughout the process.

When can I apply for a trademark application?

No. You do not need an attorney to file an application for registration of a trademark with the United States Patent and Trademark Office (USPTO). That being said, you really ought to hire an attorney if you can afford one.

How do I file a trademark application online?

If you are filing a trademark application and are not 100% sure you are filing it correctly you should hire a trademark attorney. Otherwise, you can lose your government filing fee, submit an application that gets rejected via an Office action or worse, file an application that gets noticed by the actual trademark owner, who then notifies you to cease and desist or sues you for …

Do I need an attorney to register a trademark in the USA?

No. You do not need an attorney to file an application for registration of a trademark with the United States Patent and Trademark Office (USPTO).

How do you trademark a phrase without a lawyer?

How to Trademark a SloganGo to the United States Patent and Trademark Office (USPTO) website.Check the Trademark Electronic Search System (TESS) database. Make sure the slogan isn't already registered in the same category.Submit your trademark application. Pay the filing fee.

Can we apply for trademark on our own?

So, an individual can file for the registration of his trademark himself. The application can be filed online through the e-filing gateway available at the official website or in writing with the Indian Trademark Office (TMO).Feb 8, 2021

Is it easy to file a trademark?

Filing a trademark isn't a simple process, but the protection it affords your brand is worth your time and effort. To register a trademark with the U.S. Patent and Trademark Office (USPTO), you will need to fill out and submit a trademark application.Jul 21, 2021

How can a trademark attorney help you?

A trademark attorney can also help enforce your trademark after it is registered by monitoring new trademark applications or uses of your trademark and either opposing the applications or taking action to stop the infringing use.

What is a trademark?

Trademark Defined. A trademark can protect the words or symbols you use to identify your business. For example, the Nike Corporation has trademarks in the name “Nike," the swoosh symbol, and the phrase “Just Do It.".

What are some common mistakes that can be made in trademark registration?

Other common mistakes include: Choosing the wrong filing basis. Submitting an improper trademark specimen. Trying to register something that does not qualify as a trademark.

What does it mean to submit an improper trademark specimen?

Submitting an improper trademark specimen. Trying to register something that does not qualify as a trademark. The USPTO may sometimes allow you to fix mistakes within a very strict deadline. If you're unable to resolve them, it will deny your application.

How much does a trademark denial cost?

Mistakes in a trademark application can cost time and money, and a trademark denial can cost you hundreds of dollars in nonrefundable filing fees. That's why, for many people, a trademark lawyer is money well spent. Make sure your work is protected START MY REGISTRATION. About the Author.

How does intellectual property affect a company?

Although it does not take up physical space, an excess of intellectual property can burden a company, directing limited funds towards maintaining registrations, defending against third-party claims, or creating and marketing a final product. Selling unused or surplus intellectual property can have an immediate positive effect on a company’s finances, generating revenue and decreasing costs.

Does Coca Cola have a trademark?

The Coca-Cola Company has a trademark in the name “Coca-Cola" as well as the way the name looks when written in white script on a red background. The key to trademarks is that they must be used in business.

How a lawyer can help

Trademark attorneys don’t simply file your application for you. If you choose the right lawyer, he or she will help you through the entire trademark registration process, from choosing a name all the way through final approval and monitoring for trademark infringement later on.

Working with the right trademark attorney

Hiring just any attorney won’t do in any matter, no less trademarks or service marks. The wrong attorney will not only cost you in legal fees, but also possibly in additional application fees. Plus, of course, additional legal fees if the process goes for multiple rounds before you secure your trademark rights.

About the Author

Mr. Morales founded his trademark law practice in January 2007 with the goal of providing intellectual property expertise to entrepreneurs and businesses around the country. Since then, he has filed more than 6,000 trademarks with the USPTO. You can learn more about Xavier here.

Protect Your Mark

Get the trademark protection you need for your business name, logo, or slogan.

How many trademarks does Gerben Law Firm have?

Gerben Law Firm has registered over 4,500 trademarks since opening our doors in 2008. We work with clients from all 50 states, and, from 30+ countries around the world. Contact us today for a free consultation with a trademark attorney.

Who is Josh Gerben?

Josh Gerben, Esq. is the founder and principal of Gerben Law Firm. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 5,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

Do You Need to Hire an Attorney to Federally Register a Trademark?

No. You do not need an attorney to file an application for registration of a trademark with the United States Patent and Trademark Office (USPTO). That being said, you really ought to hire an attorney if you can afford one.

Why Hire an Attorney if One is Not Needed?

The first reason is that we attorneys tend to be really good at this law stuff. Consider the reason why you are reading this webpage.

A Video Explanation from the U.S. Trademark Office

The USPTO has created a brief (eleven-minute) video that explains the role of the trademark office and some of the assistance that can be provided by a trademark attorney. The video is embedded below, and can also be found on the USPTO's own site.

What can an attorney do to help you with trademark infringement?

You can also take advantage of the additional services offered by your attorney, including trademark monitoring. Once your trademark is registered, your attorney can monitor its use, alert you to potential infringement, and work with you to determine the best course of action to take.

How much does a trademark attorney increase the likelihood of approval?

In fact, a study by the University of North Carolina found that applicants working with a trademark attorney increased their likelihood of approval by up to fifty percent! Unlike DIY trademark searches conducted on legal sites or search engines, the software used by most trademark attorneys is much more sophisticated.

How many trademarks does Gerben Law Firm have?

Gerben Law Firm has registered over 4,500 trademarks since opening our doors in 2008. We work with clients from all 50 states, and, from 30+ countries around the world. Contact us today for a free consultation with a trademark attorney.

Who is Josh Gerben?

Josh Gerben, Esq. is the founder and principal of Gerben Law Firm. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 5,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

Is a business owner budget conscious?

It’s understandable that new business owners are budget conscious. From designing a product to marketing and hiring employees, the costs can add up quickly. Because of this, some owners, in an effort to cut costs, may want to take advantage of one of the many legal sites advertising DIY trademark searches and registrations.

Correctly Filed Trade Mark Application

If your trade mark application is improperly filled in, or incorrectly filed, then it is very likely to be rejected and you will lose the filing fees. If you want to try again to register your trade mark, you will have to pay the full fees again, making the filing process a lot more costly than necessary.

Trade Mark Classes & Descriptions

The trade mark application process is a lengthy and relatively complicated one, particularly when it comes to classifications. There are 45 classes of goods and services that you have to choose from, and often registrations fail because the incorrect class or classes were indicated on the application.

UK or EU Registration

When registering a trade mark in the UK, you have a choice of applying for a UK trade mark, or an EU trade mark. The UK trade mark and EU trade mark provide different protections for your brand, and your trade mark attorney will be able to advise on which is best for your business and specific trade mark.

Is a separate power of attorney necessary?

A separate power or appointment of attorney is not necessary in this situation. How does this form affect the correspondence information? Once the USPTO accepts the form, the USPTO will send future correspondence to (1) the appointed attorney, if any, otherwise (2) trademark owner.

Can an attorney of record withdraw a power of attorney?

An attorney of record may use the Request for Withdrawal as Attorney of Record/Update of USPTO's Database After Power of Attorney Ends form to request withdrawal. In addition, attorneys can use the form to remove their information from the current attorney and correspondence fields of an application/registration record when a power ...

What is the first use of a trademark?

actual use—the first to use the trademark on a product that is distributed in the marketplace or, in the case of a service mark, the first to use the mark in connection with advertising or marketing of a service available to the public, or.

How long do you have to use a trademark?

If you are not yet using your mark, you can wait until you put it into use before filing a trademark application, or you can file an application on the grounds that you intend to use it within six months of the date the mark is approved for registration by the USPTO. If you are unable to put the mark into use within that period, you can purchase additional six-month extensions, one at a time until three years have passed, if you are able to convince the USPTO that the reasons for the delays are legitimate.

What is intent to use?

The advantage of filing an intent-to-use (ITU) application is that your filing date will serve as the date of your first use of the mark— assuming you go on to put the mark in actual use and take the other steps necessary to get the mark placed on the federal trademark register. This first-use date can be very important in the event a conflict develops with another mark—in the USPTO or in the marketplace.

What is the advantage of ITU?

The advantage of filing an intent-to-use (ITU) application is that your filing date will serve as the date of your first use of the mark— assuming you go on to put the mark in actual use and take the other steps necessary to get the mark placed on the federal trademark register.

How much does it cost to file intent to use?

As mentioned, the intent-to-use approach is more expensive than filing an actual use application—at least $100 more expensive, plus $150 for each additional six-month extension that is needed.

What happens if your trademark is weak?

If your mark is legally weak—for instance, it uses common words in a common way or is descriptive of the products or services—you will have little choice but to wait until you have put the mark into use and can demonstrate that the public associates the mark with your product or service. Learn more about trademark standards.

Do you need to supply specimens with intent to use?

You do not need to supply specimens with an intent-to-use application, but you'll have to include one with your Allegation of Use. In addition to the information in this chapter, the USPTO's help system should easily get you through this form.