Trademark attorney plays a substantial role in providing help for issuance of a trademark. Applicants have a lot of questions on whether self-help trademark documents are of any use to them. Trademark Electronic Application System (or simply TEAS) Plus looks manageable when you open it on the USPTO website. However, there are a number of nuances involved in filing the application.
Trademark for free. Will it work without trademark attorney?
Getting a trademark for free will only work if you can do a self-file resulting in an issued trademark. For all the self-help applicants, the most important suggestion of all is never assume anything. Assuming that the trademark is available without a trademark search will lead to denial of your application. This will cause loss of application fees along with a waste of time about 8-11 months. This is not an ideal route for any business, let alone a start-up. Assuming about the appropriate class and acceptable specimen format leads to unwanted delays.
Every year, roughly around 70% of applications are initially refused. These initial refusals are coupled with an office action, which requires you to provide additional evidence for approval. This additional evidence may sometimes be best provided when accompanied by legal memos and citations. Non-attorneys and self-help plans may not work in this situation. You should consider the possibility of hiring trademark attorney.
Do I need to hire a trademark attorney?
The following are not legally required to hire a trademark attorney.
- United States Citizens and permanent residents of the USA.
- Organizations with a principal place of business as the United States are not required to hire a trademark attorney. They can represent themselves.
During the processing of your application at USPTO, 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. However, as noted in this excellent article by USPTO, it is highly advised to hire a trademark lawyer. Only a lawyer licensed and in good standing can represent for registration and TTAB proceeding. Hiring a trademark lawyer lowers the risk of office action and ultimately denial of your application.
Hire a trademark attorney
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 involved.
Trademark attorney helps with trademark registration process
The following are the steps that you need to understand in minute details before applying for trademark registration. Having a trademark attorney review your proposed mark will increase the chance of success.
- What is my brand name? How can customers recognize my brand?
- Comprehensive trademark search: This helps to filter out any competitors that may have a trademark registration. Search also shows use based on common law with a similar brand name.
- Extensively review the search results for conflicts and undertake the likelihood of confusion analysis by trademark attorney.
- Determine what type of mark that needs protection? Standard character mark or design mark or both.
- Pursue the international classes that best identify your brand name. You may choose multiple classes, however, your USPTO filing fees also goes up. Trademark attorney will guide you choosing the classes based on your goods or services profile.
- If you are using the TEAS Plus application, then you need to select a description from the pre-defined list. Please check the homepage for the distinction between TEAS Plus and TEAS RF application.
- You need to have a specimen to show use in commerce. The specimen should at-least be substantially similar to the mark used in the diagram. The specimen can be JPG or PDF format.
- For intent to use based application, you need to sign an affirmation that you will use in the future.
- Apply for trademark along with USPTO fees based on the selection of international classes.
10. The examining attorney conducts initial examination with-in 3-4 months period. First, the examiner conducts a search of the mark. Second, the examiner may issue any of the following types of office actions in bullet points. Office action most of the time requires you to provide additional evidence. I will discuss further office action under a separate heading on this page. They are:
Letter explaining the basis of refusal.
Examiner’s amendment combined with a priority action.
Sometimes, additional disclaimers are needed along with your answer to an office action. A few times, your mark may end up only on the supplemental trademark register.
Principal trademark register should be your preferred form of registration. However, due to the descriptiveness of your mark, it may need to be placed in the supplemental register. Please check the comparison of principal and supplemental registers.
If the examining attorney satisfied with your answer, then the mark will be published in the official gazette. Anyone who wants to oppose may do so within the 30 day period following publication.
If there is no opposition within the determined time-frame 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. If someone who is not a trademark lawyer provides services, then the process may drag on longer. Also, it is not legal for someone who is not an attorney to represent you before USPTO.
Examining attorney – office action
Upon completion of the initial examination, an examining trademark attorney may issue office action. An office action can only be issued if the attorney believes the trademark cannot be issued without additional information. The majority of the federal trademark applications receive office action in some form. The examiner typically gives six months to give a response. The office action will be uploaded to the USPTO portal for trademark documents along with email notification.
Examining attorney – office action types
There are several types of office actions. They include:
- Examining trademark attorney amendment: Examiner may amend the application, whenever the applicant’s representative is not required for verification. The amendments may include the following.
- Amend the identification of goods or services;
- Amend from principal to supplemental register;
- Entering a disclaimer; and
- Few minor clarifications such as state of incorporation.
- Priority action: This can be issued only upon consultation with the individual having authority to take some action on the application. This individual can be an applicant, or a legal representative such as an attorney. Consultation can be in the form of a telephone call or email. The examining attorney explains the status of the application along with additional action that is needed for issuance purposes. The priority action usually references the phone call or email. Action typically include the refusals and corresponding reasons with legal citation. It will also state further steps the applicant need to take to overcome these refusals.
- Letter explaining the basis for initial refusal:
- The letter will state the reason for initial refusal; and
- It will provide ways to overcome the refusal with evidence.
- Examining trademark attorney amendment combined with a priority action: Combined action involving examiner’s amendment and priority action may be issued in certain situations. As stated in the above paragraphs, the examiner may issue certain limited amendments at any time. Priority action can only be issued upon voice or email conversation with the applicant’s representative.
Examining trademark attorney issues initial refusal
There are several types of refusals issued by examining trademark attorney. I will briefly mention the common types of refusals. They include the following.
- Ornamentation refusal.
- Trade name refusal.
- Informational matter refusal.
- Scandalous or immoral matter refusal.
- Likelihood of confusion refusal.
- Descriptiveness refusal.
- Geographical significance refusal.
- Surname refusal etc.
Attorney helps with office action response
The applicant’s representative must respond within the six months timeline. If the representative needs more time, then there is an additional USPTO fee for an extension of time. The office action response is complicated and needs to include requested evidence. Legal citations are useful to persuade the examining attorney.
Foreign trademark applicants – Hire a US licensed trademark attorney
Do foreign trademark applicants need to hire a US trademark attorney? Yes, you need to hire a US licensed trademark attorney who is in good standing with the bar association. All foreign applicants, foreign registrants, and TTAB proceeding parties must hire a US licensed trademark lawyer. In foreign countries, the attorney is also called a solicitor, lawyer, etc. For your understanding purposes, we are also called a trademark lawyer.
USPTO changed the rule requiring US licensed trademark attorney representation for foreign applicants. This rule is effective from August 3, 2019. This rule requires citizenship or permanent residency in the USA for self-representation purposes before USPTO. Alternatively, your organization qualifies for self-representation if they are based out of the USA. Please make arrangements to hire a licensed US trademark lawyer in good standing with the state bar association.
For foreign applicants, we offer services for trademark application based on two criteria. They are:
1. Section 44 trademark application based on a foreign priority filing basis.
- Foreign registration; or
- Pending foreign application.
2. New US trademark application based on section 1(a) or section 1(b).
New US application gives a lot more flexibility in defining goods or services. All of our registration order forms are flexible and applicable to both US-based and Foreign priority-based applications. You can order trademark registration services by clicking on either one of the applicable links below.