Do I Need to Hire a Trademark Attorney?

If you live in the US and you're applying for registration in the US, you aren't required by the USPTO to hire a trademark lawyer. However, the USPTO strongly encourages applicants to seek legal counsel specializing in trademark law. And if you don't live in the US, you must hire a US-licensed attorney to represent you.

What is an IP attorney?

An IP Attorney is an intellectual property attorney, meaning an attorney who specializes in creations of the mind, such as:

• inventions
• literary and artistic works
• designs and symbols
• names
• images used in commerce

Why should you hire an intellectual property lawyer?

1. IP attorneys can give legal advice: The examining attorney at the USPTO can accept or reject your trademark application, but they can't give you legal advice about how to find success with your trademark registration.

Consulting a trademark lawyer can help you determine your legal rights and the filing basis for your application. They can ensure that your application accurately identifies your goods and/or services, that you've selected an appropriate proof of use, and much more throughout the application process.

2. IP attorneys can conduct trademark searches: Before you file your mark, engage a trademark attorney to conduct a comprehensive trademark clearance search to help you determine if your trademark is eligible for registration. A trademark must not be too similar to any other registered trademark.

Unlike, say, a domain name, which you can own as long as the exact name is not taken, a trademark could be rejected for the likelihood of confusion with another mark. Even if another mark isn't registered, if it has common law usage rights, it could block your mark from becoming registered.

3. IP attorneys can represent you before the TTAB: Here are a few different reasons you may find yourself needing to go before the Trademark Trial and Appeals Board (TTAB):

• If the examining attorney makes a decision that you disagree with, you can file an appeal.
• If someone opposes your trademark and tries to get your application or mark canceled.
• If you wish to challenge someone else's trademark.

Appeals, oppositions, and cancellations are all somewhat complex, with specific procedures and strict deadlines. They're likened to proceedings in federal court. When it comes to litigation, an experienced IP attorney can help you settle a dispute without going to court.

4. IP attorneys can help with trademark maintenance: A trademark attorney can help you understand what your trademark rights cover and help advise you when issues arise. They can help you assert your rights against infringement or defend your rights if someone else claims that you are infringing on their trademarks.

Trademarkia has experienced trademark, patent, and copyright lawyers who can help protect intellectual property. We offer automatic email reminders when your trademark is up for trademark renewal to help you stay on top of trademark maintenance.

Not sure how much a trademark attorney costs? We explore this in our article “How Much Does a Trademark Attorney Cost? (+ The Benefits).”

Can I conduct trademark registration on my own?

Yes, you can conduct trademark registration on your own. 

Should you? 

That's debatable.

The issue is that trademark law is complex, so there are many elements to the trademark registration process that you may have yet to hear of. A trademark attorney is well-versed in these and can navigate the legal complexities to ensure successful registration.

Secure your trademark: hire a trademark attorney.

What can we gather from all we've covered? While you don't need to hire a trademark attorney, ideally, it's better to. Intellectual property lawyers have been specially trained and understand the United States Patent and Trademark Office and their requirements.

Interested in registering your trademark? You can get in touch with an experienced trademark attorney on our website.