Do you need a lawyer to apply for a trademark registration? Well, that depends on who you are. A trademark lawyer is a legal necessity for a so-called “foreign applicant,” for example.
But given the complexities of the trademark application process, hiring an attorney is also a very good idea for anyone else seeking trademark protection.
Benefits of Federal Registration
You can obtain common law trademark rights simply by creating a distinctive mark and using it in commerce. You can also file a state trademark application with state governments.
The Secretary of State of Texas, for example, will register your trademark for five years at a time assuming all other requirements are met by your application for trademark. Federal registration, however, offers the following additional benefits:
- Nationwide trademark protection, instead of the mere statewide protection that state law offer and the limited trademark rights offered under common law;
- Easier enforcement of your trademark rights;
- The possibility of attaining “incontestable” status after five years of registration, which makes your trademark difficult to challenge;
- The right to Use the ® symbol on your products;
- Help from US Customs and Border Protection to prevent the importation of infringing products (if you notify them); and
- Access to the US federal court system.
The foregoing list is not exhaustive. You can discuss other benefits federal registration may offer you with your attorney.
The Attorney Requirement for “Foreign Trademark Registrants”
As of August 3, 2019, a foreign trademark registrant must retain a US-licensed attorney to complete a trademark registration. A “foreign trademark applicant” is anyone who is not:
- A US citizen;
- A lawful permanent resident; or
- Someone (an individual or a company) who is applying for international trademark registration under the Madrid Protocol.
Even if you are a foreign trademark registrant, meaning that you fall outside of the three foregoing groups, you can still file an initial trademark application without the help of a US trademark attorney. The problem is that you will not be able to respond to Office Actions or execute trademark renewals without a US attorney.
These restrictions effectively prevent foreign trademark applicants from completing the registration process without the help of a US attorney.
Why Is a Trademark Registration Attorney Necessary for Domestic Trademark Registrants?
For domestic trademark registrants, retaining a trademark registration lawyer is a practical necessity rather than a legal one. A trademark registration attorney can help you:
- Identify and understand the legal issues at stake. Trademark law can be complex, and the legal issues that present themselves in a trademark application may not be at all obvious to a non-lawyer.
- Advise you on how to select a strong and effective trademark and evaluate the strength of the trademarks you are already using.
- Perform a trademark search to identify any similar marks that might prevent your mark from being registered. It is relatively easy to identify an “exact match” trademark. Identifying a “confusingly similar” trademark, however, requires the exercise of legal judgment.
- Draft a proper product description for your trademark.
- Determine which class or classes your trademark should be filed under.
- File your initial trademark application with the US Patent and Trademark Office (USPTO).
- Respond to Office Actions. Failure to respond promptly and appropriately to an Office Action can lead to rejection of your registration application.
- If your application is rejected, prepare and file an appeal with the Trademark Trial and Appeal Board.
- Keep up with deadlines. You will probably have to file a Section 8 and 15 Affidavit after five years and file a trademark renewal application after 10 years.
- Advise you on how to use your trademark effectively without infringing someone else’s trademark.
- Fight back when someone infringes your trademark rights.This may mean sending a “cease and desist” letter, negotiating a settlement, or taking the offending party to court.
These complex tasks are not things you want to confront without legal experience. You can avoid future conflicts by relying on a knowledgeable trademark attorney to help you obtain appropriate trademark protection at the outset and take steps to protect your trademark moving forward.
Contact a Trademark Application Attorney Today
The earlier in the process you seek a trademark application lawyer, the better your odds of eventual approval will be. Contact The Polasek Law Firm for a free consultation. I have spent years helping people across the nation with their intellectual property needs.
Just call 832-400-4191 or contact the firm online.
Ted Polasek
Ted was a founding partner of Polasek, Quisenberry & Errington, L.L.P. (PQE), a firm that represented patent owners and companies accused of patent infringement. For nearly 25 years, Ted’s core practice has been litigating patent infringement cases, for hourly and clients on a contingent fee or other result-oriented basis. Ted attended the South Texas College of Law and graduated cum laude with his Juris Doctorate in 1990 and received a B.S. in Chemical Engineering from the University of Texas.
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