What Do Trademark Attorneys Actually Do?
Trademark attorneys generally do at least four things:
Conduct Trademark Searches
Develop a legal filing strategy for your company’s trademarks.
Draft trademark applications.
Respond to USPTO Office Actions.
Plenty of internet-based companies that claim they can file your trademark for $69, so why bother hiring a trademark attorney?
Here are a few reasons:
1. Trademark attorneys conduct useful trademark searches.
Trademark attorneys can conduct searches on your trademarks before you adopt them as part of your marketing and branding strategies. Think of it this way: conducting a trademark search can provide valuable information about which trademark registrations are worth pursuing, so that you can focus on building your brand while avoiding potential conflicts down the road.
2. Trademark attorneys can help create a filing strategy.
Another valuable service provided by trademark attorneys is assisting with creating a filing strategy for your trademarks. Developing a creative approach to branding can be crucial for brands looking to differentiate themselves in the marketplace.
Think of your favorite sports team. They probably have registered trademarks for each of their logos, their city name, as well as their full name. For example, the Detroit Tigers have registered trademarks for the old English “D”, “Detroit”, and the team name, Detroit Tigers:
This strategy allows the tigers to maintain protection for their most distinctive symbols. Hiring a Trademark attorney is an efficient way to build a robust IP portfolio to protect your brand throughout all of its iterations.
3. Trademark attorneys draft your trademark application.
Trademark attorneys can also help draft proper trademark applications that meet the specific requirements of the United States Patent and Trademark Office (USPTO).
It’s important to remember that a trademark application is a legal document. While the questions may sometimes seem innocuous, or easy, there’s typically a technical response that’s required in order for the government to be able to approve your application. If a trademark attorney drafts an application for your business, you are more likely to see an approval by the government than if you just draft it yourself.
In fact, at least one study showed there was nearly a 50% increase in the acceptance rate of applications from people that filed a trademark with an attorney versus doing it without.
4. Trademark attorneys respond to Office Actions and refusals.
Once you have submitted your Trademark application, trademark attorneys can provide value by responding to office actions and refusals from the USPTO.
Not all trademark applications go smoothly. For example, if the USPTO issues a refusal because your mark potentially conflicts with someone else’s existing trademark, there’s a number of things a trademark attorney can evaluate and help you do:
Potentially draft an appeal, or make an argument to the government that would get around the refusal.
Assess whether the other trademark owner is still using the mark, and if not, evaluate whether or not that trademark could be canceled, so that you can potentially proceed to register your mark
As shown above, Trademark attorneys can provide value and insight in navigating the USPTO. If you have any questions about how we can benefit you throughout the trademark application process, please reach out to us through the contact form on our website.
