Can You File a Trademark Without an Attorney?

Registering a trademark is recommended for protecting your brand, but the process can be complex. While you can file without an attorney, doing so carries risks - mistakes may lead to delays, rejections, or even legal disputes.

The process begins with a thorough search for existing trademarks, followed by selecting the appropriate classification. After that, you submit your application to the USPTO and, if needed, respond to any Office Actions. Although handling the process yourself can save money, errors can be costly. If your business name is valuable or complex, seeking legal assistance may be a wise investment.

Regardless of how you file, conducting thorough research and adhering to USPTO guidelines will help ensure a smoother process.

Trademark filing 101: what you need to know

The USPTO permits individuals and companies to file trademarks by themselves. The procedure involves several steps:

1. Preliminary trademark search

Before filing, conduct a clearance search to ensure availability and avoid potential disputes. Using a reliable trademark checker can help by scanning databases and identifying conflicts, making the process smoother for applicants.

The USPTO's trademark search system allows you to check registered marks in the US, but it doesn't include common law, state, or foreign trademarks. To be thorough, supplement your search with Google, social media, and business directories.

2. The filing of your application

After confirmation, submit the trademark application via TEAS. Give information such as the name of the trademark. Provide the goods or services it intends to cover. State the basis of filing, either use in commerce or intention to use. When you submit, the USPTO assigns a serial number to follow up in the TSDR system.

3. The USPTO attorney examination

A USPTO attorney reviews the application within six to seven months, assessing potential conflicts with existing trademarks, descriptiveness, and proper classification. If issues arise, they issue an Office Action, requiring a response within three months (however, you can extend this by an additional three months for a fee).

Failure to respond can result in refusal or abandonment. If rejected, applicants may request reconsideration or appeal the decision before the Trademark Trial and Appeal Board (TTAB).

4. A publication & opposition period

If approved, the mark is published in the Official Gazette. There is a 30-day period for others to oppose it. For intent-to-use applications, the USPTO sends a Notice of Allowance (NOA). The applicant has six months to file a Statement of Use (SOU). Extensions are possible for up to three years (with up to five six-month extensions) if necessary.

5. Registration & maintenance

Upon completion, the USPTO issues an electronic Registration Certificate. To keep the trademark alive, owners must submit a Declaration of Use (Section 8) between the 5th and 6th years.

They must also submit a combined Declaration of Use and Renewal Application (Sections 8 & 9) every 10 years. They may request incontestability status (Section 15) after five years. This gives the trademark greater legal protection. Delays can lead to cancellation.

The pros and cons of filing a trademark without an attorney

Filing a trademark without an attorney is a cost-effective option, but it has advantages and disadvantages.

Pros

The primary advantage is cost savings, as avoiding attorney fees can save hundreds of dollars. It also allows applicants to maintain direct control over the process without involving a third party. Additionally, it serves as a learning experience, giving business owners valuable insight into intellectual property law.

Cons

Filing without legal assistance carries the risk of mistakes, which can lead to refusals, delays, or even legal disputes. Limited legal knowledge may also be a challenge, as complexities such as likelihood of confusion, disclaimers, or specimen requirements can be difficult to navigate without expertise. Additionally, errors in the initial application may result in costly litigation or the need to reapply, leading to higher expenses in the long run.

While filing independently is an option, it should be approached carefully. If the process feels overwhelming or the brand holds significant value, seeking legal guidance may be the best way to ensure long-term protection.

Trademark trouble? When to call in an attorney

While US citizens aren't required to hire a trademark attorney, the USPTO strongly recommends it, especially for complex cases. Attorneys conduct more thorough searches across state, foreign, and industry databases, provide a more accurate assessment of potential conflicts, and offer legal guidance in case of disputes.

However, attorney representation is mandatory for foreign applicants filing a trademark application with the USPTO. And since USPTO examiners don't provide legal advice or guidance, seeking professional assistance can help ensure a smoother and more successful filing process.

To DIY or not to DIY?

Filing a trademark without an attorney is possible, and many small business owners attempt it. However, the process involves conducting a thorough trademark search, selecting the correct classification, submitting an application, responding to office actions, and maintaining the registration - all of which can be complex and time-consuming.

While filing on your own may save money and give you more control, it also comes with significant risks, including errors, legal complications, and potential rejections. If your brand is unique or high-risk, working with Trademarkia's experienced attorneys can help you avoid costly mistakes and streamline the registration process.

To further minimize risks, Trademarkia's advanced trademark search service goes beyond the USPTO database, checking state, common law, and international trademarks - ensuring you make informed decisions before filing.

Additional resources

Glossary of legal terms

Trademark - A legally protected word, phrase, symbol, or design that identifies and distinguishes a brand's goods or services.
USPTO (United States Patent and Trademark Office) - The federal agency responsible for registering trademarks and patents in the US.
Common law trademark - A trademark that gains protection through use in commerce, even if it isn't registered with the USPTO.
Likelihood of confusion - A legal standard used by the USPTO to determine if a new trademark is too similar to an existing one, potentially misleading consumers.
TEAS (Trademark Electronic Application System) - The online system used to submit trademark applications to the USPTO.
Office action - A formal notice from the USPTO highlighting issues in a trademark application that must be addressed for approval.
TSDR (Trademark Status and Document Retrieval System) - A USPTO system that allows applicants to track their trademark application status.
Notice of Allowance (NOA) - A USPTO notice issued for an intent-to-use trademark application, requiring the applicant to submit proof of use before registration.
Statement of Use (SOU) - A legal document proving that a trademark is being used in commerce, required after receiving a Notice of Allowance.
Official Gazette - A weekly USPTO publication that lists approved trademarks and allows a 30-day opposition period for third parties.
Declaration of Use (Section 8) - A required filing between the 5th and 6th years after registration to confirm continued use of the trademark.
Renewal application (Sections 8 & 9) - A filing required every 10 years to maintain trademark protection.
Incontestability status (Section 15) - A filing available after five years that strengthens trademark rights by limiting legal challenges.
Trademark Trial and Appeal Board (TTAB) - A USPTO body that handles disputes related to trademark registration and refusals.
Trademark search - The process of checking existing trademarks to ensure a new mark does not infringe on others' rights.

Can You File a Trademark Yourself? What to Consider First