What Does a Trademark Attorney Do?
April 5th, 2023
Filing an application for trademark registration with the U.S. Patent and Trademark Office (USPTO) is only one piece of the legal strategy to protect your brand. And there are plenty of online services claiming to be experts in filing trademark applications with the USPTO. So, why hire a trademark lawyer? Let us count the reasons:
1. You want the best chance of getting your mark registered.
If you are planning to apply for federal registration of your trademark, you probably already know that registration with the USPTO provides some important benefits:
There is no rubber stamping at the USPTO
- Puts the public on notice that you are the owner of your trademark;
- Allows you to build your reputation and consumer goodwill on solid legal foundation;
- Protects against other companies’ use of the same or confusingly similar trademarks;
- Creates standing to enforce your rights as owner of your trademark.
Getting that coveted registration certificate takes more than simply filling out the application. In fact, submitting the application itself should be the last step in preparing your trademark for review at the USPTO. Keep in mind, there is no rubber stamping at the USPTO. The USPTO is a federal agency that employs hundreds of attorneys who carefully review each individual application to determine whether your trademark is protectable under law.
Trademark protection hinges on distinctiveness, meaning your mark must identify and distinguish your goods or services. The USPTO will refuse registration of a mark that is merely descriptive or generic. For example, you won’t get a registration for the trademark HAMBURGER STAND if your business is, well, a hamburger stand. District Trademark provides trademark selection and vetting counsel so that you know, before spending time and money on filing applications, that your trademark meets the legal requirements for federal protection.
Even the cleverest trademark can fail
Even if your mark is distinctive, it will fail to achieve registration if it is confusingly similar to another registered trademark. A simple search engine search is not enough to clear a trademark for registration. District Trademark utilizes robust, industry-leading search services to comb through federal and state registration databases, websites, business listings, domain name databases, and social media posts, all to ensure that your trademark has the best chance of surviving the USPTO’s conflict analysis. Our trademark attorneys are trained to identify potential conflicts and competing trademarks that may be uncovered by these thorough trademark clearance searches. Armed with our analysis of potential conflicts, you can be more certain that your trademark application will stand a better chance of achieving federal registration.
2. You value your time.
Completing the trademark application process can take time. District Trademark will prepare and file your application, including selecting the appropriate USPTO process and international class designations, tailoring goods and services descriptions, and presenting appropriate use-in-commerce specimens. Based on the influx of trademark applications at the USPTO, it can take more than six months for an application even to be assigned to a USPTO examining attorney. Insufficient detail or other errors in your trademark application can cause further delays or even a refusal.
Without an attorney, trademark owners must navigate the USPTO processes and adhere to the deadlines (some of which have shortened quite a bit) for responding to office actions and other communications on their own. District Trademark will serve as official attorney-of-record to maintain and handle all documentation and communication for the trademark registration process, including responding to office actions issued by the USPTO. We believe our clients should spend their valuable time running and growing their businesses. Let us handle the trademarks.
3. You want to stay within your branding budget.
Trademark applicants must be vigilant to adhere to USPTO response deadlines, or they could face abandonment of their trademark application and/or additional fees to extend response deadlines or revive abandoned applications. Some clients engage us late in the process, after they have already filed one or more applications. We are happy to assist at any stage, but we find that the sooner you engage, the less likely you are to face additional fees to amend or fix problems with your application. Let us help you keep within your branding budget!
District Trademark’s legal team is ready to help you get from trademark selection to registration as efficiently as possible. Get started by clicking on the LET’S MEET button on our website, or contact us at email@example.com
with any questions or to discuss any legal trademark needs.