A common question is whether or not you need to retain a trademark attorney in the state in which you live in order to trademark a name. The simple answer to the question is, No. While it is critically important to recognize that attorneys are licensed within particular states by the state bar associations, they can also practice throughout the United States and world. Therefore, the area of trademark law is particularly unique in that attorneys regularly practice in federal court as opposed to state court. It is also important to recognize that a trademark attorney, no matter where they’re located, can serve as the attorney or record for a trademark application with The United States Patent and Trademark Office. The attorney does not have to be from the same state as the individual or business entity that is the owner of that trademark application or trademark registration.
Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.
This is Brian Hall, a trademark attorney with Traverse Legal, PLC, a trademark law firm specializing in representation of trademark owners throughout the world. Today, will be answering the question of whether or not I need a trademark attorney in my state.
This is a question I often hear from people throughout the United States. Whether you’re from Nevada, Florida, Arizona, Utah or any other state, a common question is whether or not you need to retain a trademark attorney in the state in which you live. The simple answer to the question is, No. While it is critically important to recognize that attorneys are licensed within particular states by the state bar associations in which they reside, they can also practice throughout the United States and throughout the world, depending upon whether or not they need to appear within those local courts. Therefore, the area of trademark law is particularly unique in that attorneys regularly practice in federal court as opposed to state court. So, if a matter arises that requires the need of a trademark attorney, that attorney can get admitted as what is known as Pro Hac Vice, meaning for that particular item.
It is also important to recognize that a trademark attorney, no matter where they’re located, can serve as the attorney or record for a trademark application with The United States Patent and Trademark Office. The attorney does not have to be from the same state as the individual or business entity that is the owner of that trademark application or trademark registration. You need go no further than the actual application itself that requires that the attorney of record simply identify a state bar in which it is licensed to practice, so long as the trademark attorney has a license to practice in any jurisdiction or state within the United States, he or she may serve as the trademark attorney of record for the particular application.
Now, It is convenient from time to time to be able to drive down the street to your local trademark attorney and meet with him or her to answer a question related to your application, your trademark use, or your trademark protection. However, more often than not, in today’s global business world, the ability to get online, via email or via an extranet system like the one we use at Traverse Legal, makes it just as easy to interact with your trademark attorney regardless of location. So what I always recommend to clients and prospective clients is identify a trademark attorney with whom you’re comfortable. Make sure that trademark attorney has experience in the area, and that experience can be trademark applications and trademark registration, performing trademark monitoring and trademark enforcement, and especially, having gone through trademark litigation on either the plaintiff or defendant side. Identifying a trademark attorney with that kind of experience will give you far greater benefit than identifying an attorney that happens to be down the street or in the same city as you.
So, ultimately, don’t look at whether or not that attorney is from Florida, Michigan, Nevada, California or some other state. Instead, look to make sure that trademark attorney can adequately represent your trademark interests and help you to either acquire your trademark, enforce your trademark or monetize your business as a result of your trademark.
This has been Brian Hall answering your question: Whether or not you need a trademark attorney in the location or state in which you live.
You’ve been listening to Trademark Law Radio. Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.
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