Trademarks are important for your brand. Not only do they distinguish your goods and services from those of your competitors, but they also help to prevent other people from using a mark too similar to your own.
So, you likely understand the importance of a trademark, but you might be asking whether should you file your trademark application yourself, or hire a professional to do it for you. While filing a trademark application may seem like a simple and straightforward process, there are many pitfalls and challenges that can arise along the way. In this blog, we’ll explain why you shouldn’t DIY your trademark application, and why you should hire a U.S.-licensed trademark attorney to assist you.
The Risks of DIY Trademark Application
Filing a trademark application yourself may seem like a cost-effective and convenient option, but it can also expose you to many risks and disadvantages, such as:
Choosing a weak or ineligible mark
Not all marks are eligible for trademark protection. Some marks are too generic, descriptive, or common to function as trademarks. Others may be confusingly similar to existing marks, or may violate the rights of third parties. If you choose a weak or ineligible mark, you may waste time and money on a mark that is likely to be rejected or challenged by the USPTO or other parties.
Failing to conduct a comprehensive trademark search
Before you file your trademark application, you should conduct a thorough search to make sure that your mark is not already registered or in use by someone else. This involves searching not only the USPTO’s database, but also other sources, such as state and foreign trademark databases, domain names, social media, online platforms, and common law uses. If you fail to conduct a comprehensive trademark search, you may miss potential conflicts or risks that could affect your trademark rights and registration.
Making mistakes or omissions in your application
Filing a trademark application requires providing accurate and complete information about your mark, your goods or services, and your basis for filing. You also need to follow the USPTO’s formatting and filing guidelines, and pay the appropriate fees. If you make any mistakes or omissions in your application, you may cause delays, incur additional fees, or even lose your application or registration.
Receiving and responding to office actions
After you file your trademark application, it will be assigned to an examining attorney at the USPTO, who will review it for compliance with the trademark laws and rules. The examining attorney may issue an office action, which is a letter that identifies any problems or issues with your application and requests additional information or clarification. You will have 6 months to respond to an office action, or your application will be abandoned. Responding to an office action requires legal knowledge and skills, and may involve complex arguments or evidence. If you fail to respond properly or timely, you may jeopardize your trademark application or registration.
Facing oppositions or cancellations
After your trademark application is approved by the examining attorney, it will be published for opposition in the Official Gazette, which is a weekly online publication that notifies the public of pending trademark registrations. Anyone who believes that they will be harmed by your registration has 30 days to file an opposition or request an extension of time to oppose. If someone opposes your mark, you will have to defend your mark before the USPTO’s Trademark Trial and Appeal Board (TTAB), which is a quasi-judicial body that decides trademark disputes. Similarly, after your trademark is registered, anyone who believes that your registration is invalid or should be cancelled can file a petition for cancellation before the TTAB. Facing an opposition or a cancellation is like going to court, and requires legal representation and expertise. If you fail to defend your mark adequately, you may lose your trademark application or registration.
The Benefits of Hiring a Trademark Attorney
As you can see, filing a trademark application is not a simple or easy process, and there are many potential pitfalls and challenges that can arise along the way. That’s why you should hire a U.S.-licensed trademark attorney to assist you. A trademark attorney can provide you with many benefits, such as:
Providing you with crucial legal advice about your trademark
A trademark attorney can help you choose a strong and distinctive mark that is eligible for trademark protection and not likely to conflict with existing marks. A trademark attorney can also advise you on how to use and protect your mark, and how to enforce your trademark rights against infringers.
Conducting a comprehensive trademark search before you file your application
A trademark attorney can conduct a thorough trademark search using professional tools and databases, and interpret the results of such findings. A trademark attorney can also advise you on how to proceed if there are any potential conflicts or risks with your mark.
Preparing and filing your application accurately
A trademark attorney can prepare and file your trademark application using the USPTO’s Trademark Electronic Application System (TEAS), and ensure that you provide accurate and complete information about your mark, your goods or services, and your basis for filing. A trademark attorney can also help you avoid common mistakes or omissions that may cause delays or rejections.
Responding to legal correspondence from the USPTO
A trademark attorney can communicate with the examining attorney on your behalf, and respond to any office actions or other correspondence from the USPTO. A trademark attorney can also help you overcome any objections or refusals that may arise during the examination process, and provide any additional information or evidence that is requested.
Enforcing and maintaining your trademark rights
A trademark attorney can help you monitor new trademark applications or uses of your mark, and take steps to oppose or stop potentially infringing uses. A trademark attorney can also help you maintain your trademark registration by filing the required documents and fees with the USPTO, such as declarations of use or renewal applications.
Representing you at the USPTO’s Trademark Trial and Appeal Board
A trademark attorney can represent you at the TTAB if someone opposes your mark or seeks to cancel your registration. A trademark attorney can help you prepare and file the necessary pleadings, motions, discovery, and evidence, and argue your case before the TTAB. A trademark attorney can also help you negotiate a settlement or appeal a decision if necessary.
Filing a trademark application yourself may seem like a cost-effective and convenient option, but it can also expose you to many risks and disadvantages. Hiring a U.S.-licensed trademark attorney can provide you with many benefits and advantages, and increase your chances of getting your trademark registered and protected. A trademark attorney can save you time, money, and hassle, and help you avoid or overcome any pitfalls or challenges that may arise during the trademark process. Contact us if have questions or want to learn more about trademarks.