Do I Need an Attorney to Register a Trademark?

CMRS Law Trademark

As a trademark attorney that has filed multiple trademark applications with the United States Patent and Trademark Office (USPTO), I can tell you that this article should really be entitled “Do I Want to Maximize My Chances of Actually Getting My Trademark Registered While Reducing My Chances of Losing my Nonrefundable Filing Fee or Incurring Additional Costs?” Unfortunately, that title is entirely too long.  However, if the answer to that question is yes, then you should work with an attorney to register your trademark.

Attorney vs. Non-Attorney: The Statistics

I’m not suggesting you use a trademark attorney simply because I am a trademark attorney. The benefits of using a trademark attorney rather than filing an application pro se is backed by research-based empirical evidence. A study published in the Stanford Technology Law Review in the spring of 2013 asked the question “Do Trademark Lawyers Matter?” 16 Stan. Tech. L. Rev. 583 (2013). I won’t go into all the details, but the study found trademark applicants who used an attorney had an 82% chance of reaching the publication stage of registration (the final stage). Using an attorney increased an applicant’s chance of reaching this stage by 22%. Additionally, applicants that used an attorney had a 60% chance of actually receiving a trademark registration. Using a trademark attorney increased the chance of receiving a trademark registration by 18%. Why are the registration statistics lower than the publication statistics? A large percentage of trademark applications are “intent to use” based, meaning evidence showing actual use of the trademark must be submitted to the USPTO to obtain final registration. This evidence, which an attorney relies on the client to provide, is not always submitted and can result in a trademark failing to register. For a link to the full study, click here.

Initial Registration Considerations

Why do those who use a trademark attorney have such a better chance at completing the registration process? To start, there are many considerations that must be addressed even before a trademark application is filed with the USPTO. The first consideration, and arguably most important, is searching to determine whether another existing trademark (whether registered or not) is the same or similar to your trademark and used on related goods or services. If you file a trademark application over an existing trademark that might be confused with yours, you risk receiving a cease and desist letter from the owner of that trademark mark, having the USPTO cite that trademark against your application (if that trademark is already filed) and refuse to register your trademark, or that owner filing an opposition or cancellation to your trademark application or registration. All these outcomes could result in a loss of your filing fees and additional legal expenses. Other initial considerations include determining how strong your trademark is and if it can actually be registered, determining the filing basis, and determining the correct owner of the trademark.

The Registration Process

 

If the trademark passes the initial considerations, an application can be filed with the USPTO. Filing an application, however, does not guarantee a trademark registration. The application is actually just the beginning of a complicated, multi-stage legal process in which an attorney at the USPTO is assigned to review your application. That process is illustrated in the graphic above. Knowledge of this process, and the ability to communicate with and respond to the examining attorney at the USPTO, maximizes your chances of receiving a trademark registration.

Conclusion

Registering a trademark is a complicated legal process that can be efficiently navigated with the help of a trademark attorney. With current non-refundable filing fees at $225 and $275 per class, gambling on a registration without the help of a trademark attorney can actually be more costly than hiring an attorney in the first place. If you would like help with the trademark registration process, contact one of our experienced attorneys to receive a flat rate quote for a trademark registration.

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