Do You Really Need a Trademark Attorney?

by Gutwein Law

Filing your trademark registration application is a simple concept. But the process you must follow and the rules governing that process are complex. Many wonder whether they would be able to successfully register a mark on their own, or if they should go with a legal technology website or law firm. Here are the three options you have along with their respective pros and cons:

Doing It Yourself

Applying for trademark registration yourself is a low-cost, high-risk option.

It’s low-cost because you’ll only be required to pay a federal filing fee. It’s high-risk because there is a significant chance of improperly narrowing your goods and services description, which could leave some of your products or services unprotected. 

You may also submit an overly broad goods and services description, which exposes your mark to a challenger filing a cancellation proceeding in order to invalidate your mark.

You may even select the wrong class of goods and services altogether. If you get it wrong, you cannot amend your application. Instead, you must completely refile, which requires a fresh set of filing fees be paid.

It’s possible that your application could receive approval despite having an inaccurate or “fraudulent” goods and services description or classification, but that doesn’t mean your mark is strongly protected. You’ll almost certainly face problems later on when you go to enforce your trademark against someone else, as it likely won’t hold up against claims of “invalidity.”

Utilizing Legal Technology Companies

Some legal technology companies offer a self-help resource, but they themselves are not law firms. Using such a service requires a minimal investment, but presents many of the same risks as going it alone.

In most cases, the lower the service fee you encounter, the more likely it is that your goods and services description is being taken verbatim and placed into your application without any kind of review or analysis.

That is to say, you’re really doing it yourself; you’re just paying someone else to transcribe it into your application for you. Because of this, your chances of running into problems with your goods and services description and classification remain high.

Some legal technology companies give you an opportunity to consult with an attorney for an additional fee, but sessions are usually capped at 30 minutes.

Working with a Law Firm

While going it alone or using a legal technology company will save you a few dollars, in most cases, the expertise and guidance you’ll receive working with experienced counsel make it well worth the investment.

An attorney can make sure your registration application is completed properly by choosing the right goods and services classification and ensuring the goods and services description is tailored specifically to your business.

Perhaps most important to consider is that 80% of trademark applications are rejected by the USPTO. For those that are rejected, there is some sort of Office Action that is received along with the rejection letter.

If your application is rejected and you receive an Office Action, your attorney can assist you in deciding if the USPTO’s rejection can be overcome. If it can, there are several possible options, not all of which require rebranding and refiling. If it can’t, you can choose to abandon your application and walk away completely.

But in most cases, if you file a response to the Office Action and strategically address the concerns of the trademark examining attorney responsible for reviewing your application, you can achieve registration. The key is having legal expertise at your disposal to ensure you don’t make a mistake that could cost you later or give up on an application too soon.

To learn more about different types of trademarks, the benefits of trademarking, a general timeline you can expect and more, visit our Essential Guide to Trademarks.

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