Do I really need a lawyer to get a trademark?

Website design By BotEap.comAs an experienced trademark attorney, I am frequently asked if individuals or small businesses need an attorney to register a federal trademark. The short answer is no, just like you don’t technically need a mechanic to change a car’s transmission or perform a major engine overhaul. However, in both cases, it is still advisable to hire a professional.

Website design By BotEap.comFirst, it is essential to conduct a thorough search of all available public records to determine if your proposed name and/or logo are similar to names or logos already used in commerce by others.

Website design By BotEap.comThe United States Patent and Trademark Office website allows you to search public records online for free. However, smart companies hire a third-party research company to do this extensive research for them. If you try to do such a search yourself, you’ll probably miss something, and that could create major problems for you in the future. In addition, there are multiple sources of information on unrecorded, but still relevant, “common law” uses that need to be considered.

Website design By BotEap.comThis voluminous investigation will undoubtedly reveal uses of third parties that are somewhat similar in some way or form to your proposed use. For example, if you are interested in using the mark “COMPUTER” in connection with jeans, there will be other marks with “computer” in them. Are they confusingly similar? That is the key question, and like most subtle questions in law, it is often a matter of degree and professional opinion.

Website design By BotEap.comOnce you are comfortable with the knowledge that your proposed brand name and logo are free of significant and conflicting third-party uses, there are still a number of questions to ask: Is the brand “generic”? the name of the class? of the goods for which you intend to use it?

Website design By BotEap.comFor example, the trademark “computer” cannot be registered for use in connection with computers. However, “computer” could theoretically become the mark of a pair of jeans, because in that context, it’s actually “arbitrary” or “fanciful.” Other categories of marks are “descriptive only”, that is, do they simply describe an attribute of the product you are marking? Is the term “suggestive”, ie does it not describe but rather suggest a feature of the goods? A legal professional can assess this issue based on how similar cases have been handled in the past.

Website design By BotEap.comIf you are still comfortable with the proposed mark, then you will need to file a formal application with the United States Patent and Trademark Office. This application costs a fee of several hundred dollars up to thousands of dollars, depending on the number of “classes” of goods or services with which you intend to use the trademark.

Website design By BotEap.comEventually, you will receive a response from an Examiner who works in the Trademark Office. That examiner will likely ask you a series of questions about your proposed mark and will often seek further clarification on your application. BE CAREFUL. Anything you say in response to these questions will become public knowledge as part of the government file.

Website design By BotEap.comIn addition, anything you do in response to these Office Actions may limit or affect your rights later. For example, denying a part of the trademark or restricting the kinds of goods for which you seek a trademark can come back to haunt you later. It’s easy to give up your rights, but it’s much harder (and sometimes impossible) to get them back.

Website design By BotEap.comSo, to answer the recurring question, an attorney is not technically needed to apply for a US federal trademark for a new mark intended for use in commerce. However, it is a long and complicated process, especially if you are not familiar with it. And just like replacing a car transmission, it requires skill and experience.