Do I Need to Work with a Trademark Attorney to Register a Trademark?

We often receive calls from prospective clients asking why they should hire a trademark attorney and can they navigate the trademark application process themselves? The short answer is, I don’t know, can you? You can cut your own hair or defend yourself in a death penalty case. You CAN. But should you? Probably not! Before you decide whether to hire a trademark attorney or do it yourself, consider the following. Do you know the ins and outs of the trademark registration process and how the US Patent and Trademark Office (USPTO) works? Do you know the potential pitfalls and common mistakes that can slow down your trademark application process or block your application altogether? Have you practised trademark law for more than 10,000 hours, thereby making you, for all intents and purposes, an expert on trademarks? Probably not. But good news for you, the trademark attorneys at FlatFee Trademark do and we have!

Let’s consider two frequently overlooked benefits of hiring a trademark attorney to navigate the federal trademark registration process, and we will leave it to you, dear client, to make your own decision.

For one, let’s say you are seeking to register a design trademark, e.g., a stylized logo with graphic designs beyond just text. While the USPTO (and our flatfeetrademark.com) website provides a free trademark search option that is fairly straightforward for word marks, it can be quite difficult for a layperson to search design elements and figure out whether there are potentially conflicting designs that may block your trademark application at the USPTO based on likelihood of confusion. What does this mean? Let’s say you want to register a design mark that looks eerily similar to the Nike Swoosh. How would you search that design? Surely, if you filed a trademark application to register a similar design without conducting a proper design search, your application would be refused registration. A knowledgeable trademark attorney knows how to effectively search word and /or design marks to avoid this potential refusal at the Trademark Office.

Another common reason you may need to hire a trademark attorney is to respond to an Office Action from the USPTO. Several times a week, we have prospective clients call to say they hired another company – which usually rhymes with Regal Room – to file their trademark application and now they’ve received an Office Action refusing registration of their mark, and the company they hired originally can’t help them. If the USPTO issues an Office Action against your trademark application, you will likely have to hire a trademark attorney to respond on your behalf. Depending on the nature and complexity of the Office Action, legal arguments and evidence supporting registration of your mark may be required to push your mark through to registration. Again, hiring an experienced trademark attorney can help to get you past this very common obstacle in the trademark application process.