Maybe you’ve been considering applying for a federally registered trademark on your own to save money. But according to the U.S. Patent and Trademark Office (USPTO), “most applicants hire an attorney who specializes in trademark matters to represent them in the application process and provide legal advice.” Indeed, the USPTO recommends getting a lawyer to help. That’s because the trademark registration process is much more complicated than it appears, and it can get contentious, which is why you need a trademark attorney to be your advocate every step of the way.
Why You Need a Trademark Lawyer
- No Legal Advice: According to the USPTO, “Filing a trademark application starts a legal proceeding,” and to that end, no legal advice regarding your trademark will be offered to you by the USTPO.
- Future Expenses: The USPTO says an attorney can save you from incurring future costs by thoroughly searching federal registrations, state registrations and common-law unregistered trademarks before the application is filed. Gouchev Law always recommends a trademark clearance to our clients.
- Enforcing Your Trademark Rights: The USPTO doesn’t implement your trademark rights, it simply registers them and leaves the rest to you. A lawyer can police and help protect your mark.
Your brand is your identity and money maker. Would you leave your wallet sitting on the sidewalk? Then why leave your brand unprotected? So let’s talk about some of the nuances of trademark registration and insider filing strategies to help you put your best foot forward.
What to Include in Your Trademark Application?
- How narrowly or broadly should your identification of goods or services be in a USPTO trademark application? Generally, you’ll receive the best protection from the broadest identification of goods and services you can get approved by the USPTO.
- Aim for a description that is arguably accurate and covers closely related goods/services that competitors (especially non-obvious ones) might offer. If necessary, the USPTO will give you an opportunity to narrow your description.
- And do make sure you’re being honest about the goods and services you include, otherwise even if you get your trademark registration approved, your mark can be challenged and/or cancelled.
What If You Plan to Expand Your Offerings?
Maybe you’re not using the mark on all the goods or services you’re planning on offering yet. You have options here. One is to file the application based on your intent to use the mark in the future. This requires that as soon as you start using the mark later you have to prove that use in order to get registration.
There is also a procedure for “dividing out” goods and services from the original application and creating two applications from one.
There’s even more to consider. For example, do you use a design mark or logo or just the words, or both. Also it’s important to think about and decide on how the colors in your logo will affect your registered trademark. Make sure to ask your trademark attorney for more information about all these issues, and others involved in the trademark application process.