Trademark Registration Basics – Do I Need a Trademark Attorney to Register My Mark?

The United States is moving towards an ‘idea economy’ were intellectual property has value often in excess of the physical goods or services you are providing. If you have a company name, brand or service you are offering, you should consider filing a trademark registration with the USPTO. There are certainly plenty of self-help guides, forms services and on-line forms available for you to attempt a ‘do it yourself’ trademark application. But the real question is whether you should attempt something so important to your company without getting expert advice. Here are some of the more important considerations if you want to trademark a name and are considering your options:

  1. Trademark attorneys go to law school and receive on-the job training in order to understand all the intricacies of trademark registration. You do not likely have the necessary education, experience, training to identify the liabilities that they may be exposing themselves to if they register a trademark without the proper due diligence.
  2. If you fail to do a trademark clearance or availability search, you could end-up triggering a trademark infringement lawsuit or threat letter against you.
  3. Just because you successfully navigate the trademark registration process, does not mean that your trademark will stand up in court or provide protection. You could be registered and end up with an invalid trademark registration.
  4. There are many decisions that you need to make when filling out the forms such which company to list as the trademark owner, which international class to file in, what specimen to attach, what to insert into the ‘first use’ fields, and dozens of other critical decisions. These decisions can determine whether your trademark name is accepted by the trademark office, or whether it will stand up to scrutiny.
  5. Once you receive your trademark registration certificate, you need to protect your mark, correctly use your mark in commerce and monitor for competitors who may be infringing your trademark.

In this radio interview with trademark attorney Brian Hall, some of the pitfalls of the trademark registration process are discussed. The trademark registration process may seem straight forward, but it is not. Highly trained and skilled attorneys work with trademark issues as part of their daily lives. They understand the risks and potential rewards. The good news is that hiring a qualified attorney to trademark your name typically costs less than $1,500, which includes trademark clearance, clearance opinion letter, completion of the registration paperwork, responses to all office actions and all other activities through publication for opposition.