when to get a trademark attorney

The trademark process can be complicated and mistakes happen, so it’s not always easy to know if you need a trademark attorney. However, some signs indicate when it might be beneficial. If your trademark application is denied or rejected due to an error on your part, then yes–you may have needed the assistance of a trademark registration lawyer.

Full Answer

Do you have to be a lawyer to practice trademark law?

As noted above, U.S.-licensed attorneys need not apply for registration to practice trademark law before the USPTO. If you are a law student interested in becoming a trademark attorney, you may want to consider participating in the USPTO’s Law School Clinic Certification Program.

What happens if you take legal advice before filing a trademark?

Your trademark submission can be rejected, or the legal validity of your trademark registration could be jeopardized, if you take advice or receive assistance from someone who is not authorized to practice law before the USPTO. We also take very seriously the competency and conduct of attorneys who practice before the USPTO.

Can attorneys represent others before the USPTO in trademark matters?

Attorneys are not required to apply for registration or recognition to practice before the USPTO in trademark matters. See 37 C.F.R. §§ 2.17; 11.1; 11.14. Subject to limited exceptions, individuals who are not active U.S.-licensed attorneys in good standing may not represent others before the USPTO in trademark matters.

Who can represent me in a trademark application or registration?

Our regulations specify that only an attorney who is an active member in good standing of the bar of the highest court of any U.S. state or territory can represent you in a trademark application, registration, or TTAB proceeding at the USPTO.

How can an attorney help you with a trademark?

What can an attorney do after trademark registration?

What can an attorney do for me?

Why must my attorney be licensed to practice law in the United States?

How to determine if a trademark is legal?

Why do trademarks need to be followed?

What is the legal responsibility of a trademark?

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About this website

When should you get your trademark?

In many cases, a business will want to start the trademark application as soon as their LLC or corporation paperwork is filed. By filing for a trademark prior to launch, you can be sure that your name is protected once you begin commercial sales. However, there may be an even stronger reason to apply early.

Is it worth applying for a trademark?

It is a good idea to register your trademark to protect yourself against an infringement suit, to add value to your company, to put your competitors and the public on notice of your rights in your own brand and to strengthen the legal protection of your mark.

What do I need to know before applying for a trademark?

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How much does it cost to put a trademark on something?

$225 to $600The basic cost to trademark a business name ranges from $225 to $600 per trademark class. This is the cost to submit your trademark application to the USPTO. The easiest and least expensive way to register your trademark is online, through the USPTO's Trademark Electronic Application System (TEAS).

What is the most common reason that a trademark might be rejected?

Likelihood of confusion is the most common reason an application will be rejected by the USPTO. Essentially, if there is a high probability that the general public will confuse your trademark with someone else's (already existing) trademark, your registration will not be granted. The two marks need not be identical.

Should I get an LLC or trademark first?

4. Should you get an LLC first or trademark? Yes, you should get an LLC first before a trademark because the trademark application will need to identify the LLC as the trademark owner. You should create an LLC or business entity before you file a trademark application.

Do you have to pay taxes on a trademark?

Report your profit from the sale of the trademark on your income taxes. You cannot deduct the cost of creating your trademark, but you can apply it to your formulation of the "income tax basis", which is the reference point for determining tax liability upon sale and depreciation deductions.

Is it difficult to get a trademark?

Filing a trademark application is complex and time-consuming and requires a knowledgeable person to ensure the paperwork is completed properly. It is important to understand trademark law to avoid making common trademark mistakes during the trademark registration process.

How long is a trademark good for?

Unlike patents and copyrights, trademarks do not expire after a set period of time. Trademarks will persist so long as the owner continues to use the trademark. Once the United States Patent and Trademark Office (USPTO), grants a registered trademark, the owner must continue to use the trademark in ordinary commerce.

How much is it to copyright a logo?

What Does it Cost to Trademark a Logo? The cost to trademark a logo with the U.S. Patent and Trademark Office (USPTO) is $275–$660 as of June 2020, plus legal fees. You can register a trademark with your state for $50-$150, but federal registration offers a great deal more legal protection.

Do I need to trademark my business name?

There's no legal requirement for you to register a trademark. Using a business name can give you 'common law' rights, even without formally registering it.

How do I get my business trademarked?

How to trademark a business nameFirst, decide if a trademark is right for you or if you should pursue another avenue. ... Next, you must choose the mark to submit to the United States Patent and Trademark Office (USPTO). ... Once you've found a suitable trademark name, prepare then submit an application to the USPTO.More items...•

Can you make money from a trademark?

But registering a trademark isn't just an opportunity for entrepreneurs to preserve all of their hard work from getting used by another company – it's another way to make money too. Some trademarks are worth billions. Google's trademark value totals a whopping $44.3 billion. Microsoft's comes in at $42.8 billion.

Why should I trademark my brand name?

The answer is that a registered trademark gives you the exclusive right to use your business name nationwide in connection with the goods and services you've identified in your registration, and allows you to enforce your trademark by filing a lawsuit in federal court.

Is it important to trademark your name?

Names hold power in business. So establishing ownership of and rights to a business name is an important step for businesses that want to ensure a name remains one-of-a-kind. Registering a trademark helps protect a name or brand from intellectual property theft or misuse as a business grows.

Should I trademark my business name or logo?

For this reason, you should apply for both trademark registrations if you have a business name and a logo you wish to protect. Wordmarks and design marks represent two very different aspects of your brand. Protecting just your name may not sufficiently protect your logo from being used by someone else.

Do I need an attorney? | USPTO

Not everyone is required to have an attorney represent them before the USPTO. However, all trademark applicants and registrants must provide and keep current their domicile address in trademark filings. This lets us determine the identity of the applicant or registrant and whether or not they must be represented by a U.S.-licensed attorney to file documents with us in trademark matters.

Best Trademark Lawyers Near Me - Attorney Ratings | FindLaw

Find the best trademarks lawyer near you today. Use our directory to quickly find local attorneys and law firm ratings in your area.

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.

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.

Who is required to practice trademark law?

Requirements to practice trademark law. Any individual who is an active member in good standing of the highest court of any U.S. state (including the District of Columbia, and any, commonwealth or territory of the U.S.) may represent others before the USPTO in trademark matters. Attorneys are not required to apply for registration ...

Can a U.S. attorney represent a person in good standing?

Subject to limited exceptions, individuals who are not active U.S.-licensed attorneys in good standing may not represent others before the USPTO in trademark matters .

How long does it take to become a trademark attorney?

Training is a two-year process, where the new attorney gains successive competence and independence, and becomes a Trademark legal expert. Career development. Trademark examining attorneys have ample opportunity for growth.

What is a trademark examining attorney?

Trademark examining attorneys review trademark applications for compliance with the Lanham Act for the purpose of determining registrability in the United States. They research and write decisions on various statutory and procedural issues, work with applicants to correct informal defects in applications, and approve applications for publication and registration. They also draft appeal briefs and represent the USPTO before the Trademark Trial and Appeal Board (TTAB).

What are the benefits of being a trademark attorney?

Trademark attorneys receive federal employee benefits, including health, life and long-term care insurance, paid annual and sick leave, and retirement benefits under the Federal Employees Retirement System (FERS) and Thrift Savings Plan (TSP) including a Roth TSP feature. Employees also are eligible for public transportation subsidies and have access to an on-site fitness center, a daycare center, and a health unit.

What is the USPTO?

The USPTO is a highly innovative agency that offers career growth in a diverse environment and a quality of life that is unique in the legal profession. Training of new attorneys. The Trademark organization proudly offers a comprehensive training program. No previous trademark experience is necessary.

Is the USPTO open to the public?

Due to ongoing precautionary measures, all USPTO offices remain closed to the public. We continue to offer online resources.

Is USPTO teleworking full time?

Due to COVID-19, the USPTO is operating in a state of maximum telework and most employees are teleworking full time. Consequently, you will start your work in a temporary telework status and your training will occur in a virtual environment. Accordingly, you will commence work under a temporary telework arrangement that will remain in effect until the agency informs you that you are no longer subject to its Situational (Ad Hoc) Telework Program. When the time comes, for example, if your original work location is established as the USPTO headquarters in Alexandria, VA, you may be asked to report to campus. The USPTO will provide as much advance notice as possible in the event of this directive and will work with you to allow you a reasonable timeframe to transition.

Do I need a trademark attorney?

The trademark process can be complicated and mistakes happen, so it’s not always easy to know if you need a trademark attorney. However, some signs indicate when it might be beneficial.

Save time and money by hiring an attorney

First (and perhaps foremost), a trademark attorney can save your business time and money by filing trademark applications on your behalf without errors. Before you ever file, they can also help with things like:

Summary

You should understand that no rule states you must hire a trademark attorney to apply for a trademark. You do not need one to file. It’s totally possible to do the necessary research, fill out the application, and file by yourself. Moreover, the U.S.

How much more likely is a trademark to be registered without a trademark attorney?

If an Office Action issues, there is an even bigger disparity. Trademark applicants with a trademark attorney are 68% more likely to get a trademark registered than those without a trademark attorney when an Office Action issues.

What is trademark law?

Trademark Lawyers. Trademarks are a form of intellectual property (IP) that identify and distinguish your products and services from others on the market. Trademark can come in the form of words, phrases, symbols or logos. Use of a trademark allows a brand to define itself and discourages unfair competition.

How to stop a trademark infringement?

When you identify trademark infringement actively taking place, the first step is to send a trademark cease and desist letter. If the letter is sent by a trademark attorney that litigates, this is often enough to end the infringing actions immediately.

Why is it important to register a trademark?

It lets people know that the trademark is your property. In cases of malicious or willful trademark infringement, a registered trademark can lead to increased damages. In reality, a trademark registration prevents an infringer from claiming ignorance over the existence of the trademark.

How many trademark infringement lawsuits are filed yearly?

There are over 4,000 trademark infringement lawsuits filed in federal courts yearly. Although every instance of trademark litigation is unique, the basic steps of a claim follow roughly the same process. Keep in mind that a settlement can be reached during any part of this cycle, and if this occurs, the parties will request that the court immediately dismiss the case. If it doesn’t play out this way, though, you can expect each of the following steps:

What happens if you don't own a trademark?

If you begin using a trademark that you don’t own, you will be exposed to claims of trademark infringement and may have to rebrand your entire company. Being forced to change your company name can be devastating especially if you are years into use.

What are some examples of trademarked business names?

In reality, trademarked business names are often exactly the same. Here are a few examples: Pandora Music and Pandora Jewelry. Delta Faucets, Delta Dental and Delta Airlines. Morningstar Farms and Morningstar Investment Research. Trademark protection is typically industry based, and can also be geography based.

How Long Does it Take to Register a Trademark?

Ask the attorney how long it takes to search trademarks, and then prepare and file your application. From there, the timing is in the hands of the USPTO.

What Are the Steps to Maintain a Trademark Once It's Filed?

To keep your trademark in good standing, you must file maintenance documents between the fifth and sixth year after registration, between the ninth and tenth year after registration, and every 10 years after that.

What Is a Trademark?

Although trademarks, patents, and copyrights are often lumped together as intellectual property, they protect different things.

Why Would I Want a Registered Trademark?

Simply using your name, logo, or other mark in your business may give you some trademark security. Still, this common law protection usually doesn't give you any rights outside the geographic area where the trademark is used. Similarly, you can register a trademark with your state, but that won't protect you beyond state lines.

How Does the Trademark Registration Process Work?

Trademark registration should ideally start with a thorough search for any similar marks that might make it difficult or impossible for you to register yours or use yours in commerce. Then, an application is prepared and filed that meets all the requirements of the USPTO.

What happens after the USPTO receives your trademark application?

After the USPTO receives your application, an examining attorney reviews it and, if there are any issues, sends you a letter called an Office action. Once any Office actions have been resolved, the USPTO publishes your trademark for opposition. If no one opposes it or if oppositions are resolved in your favor, your mark is registered.

What happens if your trademark is denied?

If your application is ultimately denied, you cannot revive it or recoup your filing fee. An alternative to hiring a local attorney is to work with a trademark filing company, preferably one that has been around a while and so has both experience and a strong reputation.

Background

Let’s start with some very general questions and issues that you may want to raise when hiring a potential trademark attorney. First, you want to try and find out if trademark law (or intellectual property more generally) is the attorney’s primary or sole area of practice.

Facts and Figures

In addition to learning about the attorney’s background in trademark law, there are also some more objective questions that you can ask. For starters, you might ask how many trademark applications they have filed before.

What is trademark attorney?

A trademark attorney’s work involves a lot of filing and preparation of documents required to file for trademarks and patents. You’ll need to be adequately prepared to take on the challenge that involves working with trademarks and patents in the relevant offices across the U.S.

What sort of duties would a trademark attorney handle?

There are a number of key roles for the trademark attorney, including the following –

What does it mean to work for a law firm?

Experience through working with a law firm will provide experience and skill in the necessary areas of patent and trademark law. For instance a law firm such as Your Trademark Attorney Law Firm will help to solidify these skills so that you become proficient by the time you decide to start your own law firm and help people with legal matters regarding patents and trademarks.

What is trademark protection?

Protecting trademarks and the trademark owner’s rights with cease and desist and other matters including potential litigation.

Who can represent clients before the US Patent and Trademark Office?

While any lawyer who is a member in good standing of the highest court of any state may represent clients before the US Patent and Trademark Office (USPTO), attorneys who have specialized training and education in patents and trademarks are often the most successful within this field.

Is trademark law fast developing?

Trademark law is an interesting and fast developing legal area.

How can an attorney help you with a trademark?

An attorney can let you know if your trademark should be available for your use and registration and decrease the possibility of you having costly legal problems by conducting a comprehensive clearance search for potentially conflicting trademarks and providing a legal opinion.

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.

What can an attorney do for me?

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:

Why must my attorney be licensed to practice law in the United States?

Non-U.S.-licensed attorneys and non-attorneys do not meet this criteria and cannot represent you in a trademark matter at the USPTO.

How to determine if a trademark is legal?

Determining if your chosen trademark can be legally protected. Determining the appropriate filing basis for your trademark application. Preparing and filing a trademark application with the USPTO that is complete and accurately identifies your goods and services. Selecting an appropriate specimen that shows how your trademark is used in commerce. ...

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 is the legal responsibility of a trademark?

It's your legal responsibility to monitor and protect your trademark from infringement by other parties. An attorney can help you understand the legal scope of your trademark rights and advise you on the best way to monitor and enforce those rights.