• Do I need a Trademark Lawyer to Register a Trademark with the Trademark Office?
  • August 17, 2009 | Author: Brian A. Hall
  • Law Firm: Traverse Legal, PLC - Traverse City Office
  • B:  Morning, Damien, good to be here.

    D:  Well I must first ask.  Can a person register a trademark without help of a lawyer, because I'm just kind of always wondered that.

    B:  Well the simple answer to that question is yes.  A person can go out to the United States Patent and Trademark Office's website at www.uspto.gov and read the information about what needs to be filed, how to file it, and essentially fill in some blanks that are on a form, and use the help screens and the other information available to file the trademark.  But whenever I hear this question, my response is always the same.  I essentially ask why would a person try and register a trademark or brand on their own when at the end of the day it can become one of the most valuable assets of their organization.  There are too many risks out there and so many other factors to consider at the time of filing and more importantly during the time between filing and you know hopefully getting to that point of registration that it's really risky to jeopardize your trademark by not knowing what you should know.

    D:  What risks am I taking if I'm registering my own trademark?

    B:  Well non-lawyers do not typically 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.  I personally went to school for three years and every other attorney out there did and practiced in the area in order to learn these intricacies of trademark law be it state law, be it federal law under the Lanham Act, etc.  Being up to speed on the latest case law, knowing how the United States Patent and Trademark Office Examining attorneys will look at an application and how to respond to additional information requests is absolutely critical.  If you use a trademark lawyer, you're getting those benefits that you don't get and you personally don't have as a non-lawyer, and at the end of the day you use a trademark lawyer for the same reason you use a realtor when buying a house or see a doctor when you don't feel well.  You're getting that expertise.

    D:  So if I'm going to use a lawyer, how much would a person who wants to register a trademark have to spend?

    B:  It really depends on which law firm you're working with.  There are services out there now such as Legal Zoom that purports to help walk you through the trademark filing and registration process, and they charge a fee.  I'd say, generally, you're looking at between $500 on the low end up to $1500 and some of those numbers do include filing fees and some don't, because at the outset you're looking at approximately a $300 filing fee that goes directly to the USPTO and before you use the help of the services or as I recommend a trademark attorney.  So not only is it important to have that knowledge and have a lawyer help you walk through the process, but you don't want to lose that initial investment you made because of some silly error or some failure to provide something that's absolutely necessary.  So really the price depends on the level of service, the amount of involvement that you're looking for, and what that law firm for example or what the lawyer will do.  There are some firms out there that will charge a certain amount of dollars per hour to work on your matter.  There are some that work off of flat fees, but you really need to know as a consumer is at the end of the day what will my cost be and what will it cover.  Will it cover just the filing?  Will it cover to responding to an examining attorney's office actions and questions?  Will it cover providing additional information?  Things along those lines.

    D: So what can lawyers like you do to help them?

    B:  Well first and foremost it's educating the client on what they have in their current business and what they could be using as a trademark.  So it's identifying for example what kind of trademark they need.  Do they need a trademark or do they need a service mark.  Do they need a trademark to be filed as an intent use trademark, because they haven't quite yet used the mark in commerce, or can they actually go full bore ahead and file as an actual use in commerce trademark. One of the other important items is identifying which international class to file in.  And essentially, Damien, international class is really just a number dedicated to a particular group of goods or services.  So understanding where you can get the most amount of protection without going so broad that you don't have protection at the end of the day is really something that a lawyer has experience in and can hone in on it and really help you.  And also I think it's critical that the lawyer be able to identify and quantify the risk associated with the trademark registration.  If you go out there and you simply want to file on your own, you might be totally remiss about other people's superior trademark rights out there.  So one thing we do as a law firm is we always urge a trademark availability assessment.  Some law firms call it a clearance, and what that does is allows us to search the USPTO database and see what other filings might be out there that could be probablematic, but not only you getting a successful registration, but possibly poking the monster so to speak.  Opening you up to liability down the road.  We also do a market research and look at things as Google, Wikopedia, etc., and see what types of common law uses of that mark are out there so that we are not filing a mark that's only going to result in you getting a cease and desist letter or even worse a lawsuit down the road.

    D:  So after you've gone through all the steps and the lawyers determine that a trademark is available, what happens after that?

    B:  Sure.  It really moves on to the filing process at that point, and there's things that you need to have to file a trademark.  It's the demographic information, you know, who's the owner, what's their contact information, etc.  It's identifying that international class that we talked about.  It's providing what's called a specimen is simply an example showing how you're using the mark in commerce.  The requirements for a specimen are different for a service mark versus a trademark.  With a trademark you need to provide, for example, a picture of a label or a tag on the actual goods.  Whereas with a service mark, simply providing a printout of your website can suffice as a specimen.  So really it's getting all those ducks in a row so to speak so that once you do file, you mitigate the chances that an examining attorney reviews it and says, you know, you filed, but this is incorrect or I need this information, etc.  The other thing and this goes back to what I talked about earlier which is so important is knowing what your lawyer will do and what is the extent of his service, but like I said, there's times where the USPTO will issue an office action which is essentially a request for additional information or clarification.  So you really get a chance to amend your application or your trademark filing so that it can proceed to registration if possible.  The other thing is there comes a point which if you get through all those preliminary stages the mark gets published for opposition meaning it gets published in an official gazette for 30 days and allows anybody out there in the world to know that you're trying to get this trademark, and they can oppose it, etc.  It's all of those things that can occur between the time you file and to the point where you actually get it registered.  And even at the point that you do get it registered it's that additional advice saying ok, now that you do have it registered, what else do you need to do?  You need to continue to use it.  You need to protect it.  You should do trademark monitoring, things along those lines.

    D:  Wow, so much stuff to consider when you're trying to brand something or get a trademark on one of your products or services.

    B:  Without a doubt.

    D:  Thank you very much for sharing all this information with us today, Brian.

    B:  Not a problem; I appreciate you having me on.

    D:  You have been listening to the Traverse Legal Radio Tech Spotlight.  We've been speaking with Brian Hall, and attorney at Traverse Legal, PLC.  I'm Damien Allen we'll catch you next time.  Have a great afternoon.

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