Westchester Women's Bar Association

The Benefits of Using a Trademark Attorney for Trademark Registration

There are numerous reasons why a trademark applicant should consider engaging a trademark attorney to assist in the trademark prosecution (the filing and registration of a trademark with the United States Patent & Trademark Office "USPTO"). In fact, it is prudent to start working with trademark counsel in advance of the application filing to ensure the proper due diligence is conducted via a trademark clearance search. Trademark counsel is critical at the early stages of the process. An experienced trademark attorney can advise you regarding the use and registration of the proposed trademark. The USPTO advises "an attorney can let you know if your trademark should be available for your use and registration and decrease the possibility of you having costly legal problems by conducting a comprehensive clearance search..." Read more about why the USPTO recommends using a trademark attorney for trademark registration.

Most trademark applicants do not know that under U.S. law, a search should be conducted not only in state and federal registration databases, but also in "common law". In the trademark context, this means those marks that are not registered on the state or federal level. The Examining Attorneys at the USPTO will not search common law trademarks because they are not obligated to nor do they have the resources to undertake the task. Therefore, it is imperative to have a trademark attorney assist you in conducting a clearance search in advance of your trademark filing in both common law and in state and federal databases. Even if a trademark applicant is successful in registering a mark, the applicant could still infringe on another party's common law rights and be sued for damages in court, unless the common law is searched in advance of use and registration. Only an attorney can provide you with a legal opinion regarding clearance.

There are many grounds upon which a trademark application can be refused by the USPTO. The most obvious reason is that your proposed trademark may be too similar to another mark, causing a likelihood of confusion with a mark already in use, a mark in a pending application or in a registration. In addition to this reason, an experienced attorney can also advise you as to whether your trademark application may be refused on other grounds. Some of the other grounds include marks that are functional, merely descriptive of the goods or services, geographically descriptive, generic, deceptively misdescriptive, ornamental, surnames, falsely suggestive of an association with persons, institutions or national symbols or if the mark fails to function as a trademark, to name a few.

In addition, only an attorney can advise you regarding proper ownership of a trademark. See our web pages entitled, Who Should Be The Owner Of A Trademark? and The Importance Of Naming The Proper Trademark Owner, for the reasons why this decision is crucial and could expose your application to risk of opposition. Attorneys will also be able to advise an applicant regarding the type of application that should be filed once they are familiar with the applicant's business and branding objectives. Finally, choosing the proper filing basis can be as important as naming the proper owner. There are various bases to select. See our web page entitled, Determining Which Filing Basis Is Appropriate For Your U.S. Trademark Application, for more information on this topic. Choosing the incorrect filing basis may leave your trademark application open to attack from a potential competitor.

Another reason to use trademark counsel to file and prosecute your application is because identifying the goods and services is of particular significance. There are strategic and legal reasons why an applicant may want to broadly define the goods and/or services or more narrowly describe the goods and/or services. The USPTO may issue a refusal on the grounds of likelihood of confusion if the goods and services are too broadly described or this could prompt an opposition from another trademark owner. However, if the applicant too narrowly defines the goods and services, they may fail to take advantage of broader legal rights. These types of mistakes may cost the applicant more time and money to prosecute the application.

There are other reasons to engage trademark counsel when registering a trademark. An attorney can defend you at the Trademark Trial and Appeal Board if your mark is challenged. Moreover, a trademark owner has the legal obligation to police and protect the mark from infringement. An attorney can counsel you on the scope of your legal rights, and advise you on the best ways to enforce your trademark rights. Lastly, an attorney can assist you with filing the mandatory post registration documents as they come due for filing at the USPTO. If you have questions, regarding your trademark or your application, please contact the firm for a courtesy consultation.

Client Reviews
Nikki's commitment to clients is unparalleled with her devotion and attention to detail in every assignment and aspect of intellectual property law. Damien Germino
Nikki Siesel is the most profound trademark lawyer I have worked with and she has thoroughly empowered me with her knowledge. Maria Jacobs