Applying to protect your trademark is just not a DIY project. If you file your trademark application yourself, you’ll probably do it wrong.
Don’t be fooled – it’s more than just filling out online forms. That is the easiest part of the process.
The Federal trademarking process involves making dozens of legal decisions and judgment calls – and you’re not likely to make all of the right choices.
The reasons are simple enough.
When you apply for a Federal trademark, you start a Federal legal proceeding – and it can get complex in a hurry. The many decisions you will need to make are interrelated, and some wrong choices can sink your application from the start – without you even knowing it.
Also, Federal Trademark Law is intricate, and the U.S. Patent and Trademark Office’s Rules are specific, unforgiving, and severely limit how you can change your application after submission. So, if you are going to try your luck and guess at the right answers, think again.
In this article about why you need a trademark attorney, we’ll discuss some of the reasons why you do not want to go it alone at the USPTO.
Seven Reasons Why You Need a Trademark Attorney
- You’ll increase your probability of success by up to 50%
- The USPTO will not give you legal advice and cannot give you a break
- The USPTO encourages you to hire a trademark attorney
- 80% of All Applications Require a Response to the USPTO
- You’ll avoid overpaying the non-refundable Official filing fees
- You’ll save time
- You’re Running a Business, Not Learning Law
1. You’ll increase your probability of success by up to 50%.
No less than the Wall Street Journal reports that Federal trademark applications filed by trademark attorneys are 50% more likely to be approved than those filed by applicants on their own. That article (link) is based on 25 years worth of USPTO data. The data also shows that the applicants using a trademark attorney to reply to Examiner objections are almost 70% more likely to succeed than applicants who try to go it alone.
According to the Wall Street Journal, Federal trademark applications filed by a trademark attorney are 50% more likely to be approved than those filed by applicants on their own. Plus, you’ll be more likely to secure more protection and avoid overpaying the Official fees.
2. The USPTO will not give you legal advice and cannot give you a break.
The U.S. Patent and Trademark Office forbids its Examiners from giving legal advice. So, if you have a legal question, or face a legal rejection, you’ll be on your own, unless you have a trademark attorney.
You will still be required to meet every rule and requirement, even if you don’t know or understand them. The USPTO cannot give you a break. Ask yourself, do you feel confident that you know:
- What is and what is not protectable?
- What is a legal disclaimer, and when is it proper?
- When is it best not to claim the colors in your logo?
- What is the supplemental register?
- What qualifies as a specimen of use for your products (and what does not)?
- What are the legal requirements for a substitute specimen?
- How to apply du Pont factors to measure trademark dissimilarity?
A trademark attorney can help you navigate these legal complexities.
3. The USPTO strongly encourages applicants to seek legal advice.
Because the Federal trademarking process is so complex, the USPTO encourages all applicants to consider hiring a trademark attorney:
“A private trademark attorney can help you before, during, and after the trademark application process…. an attorney may save you from future costly legal problems… [and] can help you navigate the application process to provide optimal protection of your trademark rights, by, for example, accurately identifying and classifying your goods and services, and preparing responses to any refusals to register that an examining attorney may issue.”
Remember, the USPTO cannot give you legal advice!
4. 80% of All Applications Require a Response to the USPTO
All applications for Federal trademarks are examined by the USPTO for compliance with many legal and procedural requirements. Applications are only granted after the USPTO determines that all of these requirements are met.
Most applications are initially denied, however. You can be denied for any one of hundreds of reasons. Sometimes, it’s a simple fix – if you know what you’re doing. Other times, you’ll need to submit a legal argument based on legal research and case citations. This is where DIY applicants get into trouble.
Trying to respond to the USPTO on your own fails more often than it succeeds. Plus, it is very easy to make a problem much worse if you don’t know exactly what you are doing. That’s where an experienced trademark attorney matters.
5. You’ll avoid overpaying the non-refundable Official filing fees
No one likes to overpay their taxes. The same is true for trademark filing fees.
Every trademark application requires a filing fee, which is calculated based on the content of the application. The USPTO categorizes every product or service that you can sell into one or more of 45 classes and will compute a filing fee for each class that your application involves. These filing fees are not refundable and can amount to $1000 or more – depending on the products and services listed in your application.
An experienced trademark attorney can make sure that you only pay for approved classes and that you avoid paying for those the Examiner rejects.
6. You’ll save time
Trademark Examiners work under severe time constraints and are required to meet strict quotas. In many cases, the Examiners are willing to try to negotiate applications to allowance so that they can get easier credit towards their quotas. Examiners are most willing to negotiate with trademark attorneys because they can send us offers without the need to take the time to explain all of the Federal Laws, USPTO Rules, and Court decisions involved. We already know them.
The Federal trademarking process routinely takes between 8-12 months. Working with a trademark attorney can help ensure that you are closer to the 8-month timeframe and not the 12.
7. You’re running a business, not learning trademark law
Federal Trademark law is complex. The USPTO has too many rules and procedures to count. It takes years to learn how the trademarking process works. You can’t dependably rely on hope and luck. There are a lot of attorneys who can’t even do it.
It’s better to focus your skills where they’re most needed: running your business.
Final words
For these reasons (and many others that are far beyond the scope of this article), the U.S. Patent and Trademark Office’s encourages applicants to work with a trademark attorney. So, do yourself and your business a favor. Hire an experienced trademark attorney. You’ll maximize your chances of success, minimize the risk of overpaying the Government for your trademark, get a better result, and save yourself time and worry.
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For more than twenty years, Michael Kondoudis has been the go-to trademarking expert for businesses of all shapes and sizes. Michael is a USPTO-licensed trademark and patent attorney, educator, speaker, and author of the Amazon best-seller: Going From Business Owner to Brand Owner. He is also an authority trusted by national news media on major trademark stories.
Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).