Why can’t I simply file the trademark registration myself? Do I really need a lawyer?
The answer is simple. Some people do register their trademarks with the USPTO without legal assistance. However, you need to be aware of the risks associated with filing a trademark with competent lawyer assistance. While anyone can fill out an on-line trademark form, there is a lot more to trademark registration than filling in the blanks and paying a filing fee. Here are some things to think about.
Is someone else already using the trademark I want to register? An experienced trademark attorney has the database tools and search query skills to let you know whether you should even spend the time and money investing in a trademark. If someone else is or was using the mark in commerce before you, even if they have not registered their mark with the trademark office, they have superior trademark rights. Moreover, it is very difficult for a layman to determine whether they have a fanciful, arbitrary, suggestive, descriptive or generic trademark. Such a categorization is critical when determining how much to invest in a particular trademark. Keep in mind, a trademark is meant to protect a good or service and distinguish it from the marks of others. Therefore, a weak trademark will give you weak protection.
Should I register a "standard character" or "stylized or special form" mark? There are different kinds of trademark registrations. Knowing which kind of trademark to file is one of the most important trademark decisions you will make.
What international class should I register my trademark? Selecting an international class that accurately reflects the goods or services you are offering is critical. When more than one class might apply, you need expert advice to make the correct designation.
What risks am I incurring by registering a trademark? Non-lawyers do not typically have the necessary education, experience and training to identify the liabilities that he or she may be exposing themselves if they register a mark without proper due diligence.
What happens if the examining attorney tells me I need to amend my trademark registration? The examining attorney almost always raises questions and requires amendments. If you get this part wrong, chances are you will not be successful in registering your proposed mark.
What is someone opposes my registration after the examining attorney has published it for opposition? This starts an administrative proceeding akin to arbitration. Good legal advice at this juncture is critical.
Hiring a trademark specialist can minimize your trademark risk. While you can file a trademark without a lawyer or hire a service that will provide self-generated forms for you to fill out on your own, the old maxim “you get what you pay for" is as applicable to trademark registration as it is to other purchases.
An experienced trademark lawyer has the necessary tools to conduct a trademark availability search, analyze problematic existing trademarks and the likelihood of a successful registration. The legal value is delivered by the attorney through background research, analysis and recommendations both before and after registration.
For help in protecting your valuable intellectual property and trademarks as well as protecting yourself from liability for trademark infringement, contact a trademark attorney today.
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