When opening a new business, a major source of stress is the startup cost involved. Getting things off the ground can seem like a never-ending stream of receipts and expenses. The natural tendency is to want to determine what you actually need, and what you can do without. You might also decide which things you can do yourself, to save money. Many business owners have asked me whether they really need a trademark attorney to file their U.S. trademark applications. It’s a very common and reasonable question.
Obviously, I’ve chosen a career as a trademark attorney to assist others with their trademark matters. However, I think it is important to be up front about this fact: there is no legal requirement that you hire an attorney to assist you with your U.S. trademark application. The USPTO’s Trademark Electronic Application System (TEAS) will even provide you with some basic information to help you with your trademark application. However, there are several reasons why I believe that most people need a trademark attorney to assist them in filing a U.S. trademark application.
Should You Even File a Trademark Application?
Most people and businesses need a trademark attorney to advise them before they are ready to file a trademark application. A trademark attorney can tell you if your mark is something that can be registered. There are many marks that are not eligible for registration. You cannot register a trademark that is considered generic, for example. There are several rules in trademark law that can prevent your registration. If you never speak with a trademark attorney, you may waste your money filing a trademark application for a mark that cannot be registered.
Without working with an attorney, you also won’t be getting a comprehensive trademark search. And their search may turn up potential conflicts that can prevent you from successfully registering your trademark. The search may indicate that additional legal research and written arguments will be needed to get your trademark registered. If that is the case, you will almost certainly need an attorney to make these arguments for you.
If your trademark is not able to be registered, or will likely cost more than a simple filing fee because you will need an attorney’s involvement down the road, wouldn’t you want to know about that up front? In trying to save money, you might end up wasting hundreds on a trademark application filing fee when from the start there was no chance of successfully registering your trademark.
The Trademark Application Form
Speaking of wasted money, the trademark application form can be tricky to complete, and not all errors can be corrected. You will waste hundreds on your government filing fee if you make a mistake that cannot be fixed. So trying to save money by filing your trademark application yourself could actually waste money.
If you cannot fix your trademark application, you may decide to file another one. However, you will lose your priority filing date from the original application. This means that if someone applies for a confusingly similar mark before you file the new application, you might not be able to obtain a trademark registration at all. Hiring a trademark attorney that has experience in filing U.S. trademark applications will prevent these mistakes. It will also help you avoid the resulting additional costs.
The Trademark Registration Process
You also may not have considered the fact that filing your application is not the end of the trademark registration process. It is really the beginning of a process that can take months or years. During that time several things can happen to your application. You need to know what the deadlines are, and make sure to properly respond in a timely fashion.
Having a trademark attorney help you with your trademark application makes it more likely that you will be successful in the registration process. They will make file any additional necessary documents correctly and before any deadlines. So even if you don’t think you need a trademark attorney to complete an application, you may need one to successfully guide you through the registration process.
I fully understand the need to save money and do-it-yourself when you are starting a new business. I had these same thoughts about cutting cost when I started working as a trademark attorney. However, when your business succeeds, its trademarks will become some of its most valuable assets. While it can be difficult to think long-term from the start of a new business, your trademarks are an area where you cannot afford to cut corners.
Do You Need Assistance With Filing Your Trademark Application?
If you are trying to decide whether you would like a trademark attorney to file your application, or if you have any questions, please feel free to call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
