Should I hire a trademark attorney? Yes. Why should I hire a trademark attorney? Please read the following in its entirety and judge it for yourself. For any successful business venture, brand recognition is essential. To manage the brand of the business, it is beneficial to have a federal trademark registration. Generally, entrepreneurs and start-up businesses looking for cost-effective ways to get trademark registration. However, a self-help trademark application may not the best option because of the multiple nuances that may be involved. The following are the steps that I think you need to understand in minute details before applying for trademark registration.
- What is my brand name? How can customers recognize my brand?
- Comprehensive trademark search: This helps to filter out any competitors that may have trademark registration or in use based on common law with similar brand names.
- Extensively review the search results for conflicts and undertake the likelihood of confusion analysis.
- Determine what type of mark that needs protection? Standard character mark or design/ stylized mark etc.
- Pursue the international classes that best identify your brand name. You may choose multiple classes, however, your USPTO filing fees also go up.
- You need to have a specimen to show use in commerce or an affirmation that you intend to use in the future for the mark.
- Apply for trademark along with USPTO fees based on the selection of international classes.
- The examining attorney replies with-in 3-4 months most probably with an office action asking you to provide additional information and small amendments about the mark.
- Sometimes additional disclaimers are needed along with your answer to office action and few times end up only on supplemental trademark register.
- If the examining attorney satisfied with your answer and no opposition is filed with USPTO, then you may be issued a trademark.
USPTO trademark registration process may take anywhere from 8 months to 11 months. Sometimes it may take close to a year due to additional queries including office actions. Most of the time, those additional queries are part of the process. An attorney who is in good standing with a bar association can only represent you before USPTO for registration and litigation purposes. However, if someone who is not a trademark attorney provides services, then the process may drag on longer than expected. Also, it is not legal for someone who is not an attorney to represent you before USPTO.
You can represent yourself as an applicant where you are a United States Citizen or permanent resident of the USA. Additionally, an organization whose principal place of business is in the United States can represent itself. USPTO recommends hiring a trademark attorney. During this time, you may want to invest in your brand and logo, however, it may become unsure whether you can acquire registration. Inadequate filings, for example without searches may lead to denials, oppositions and/or cancellations by 3rd parties.