5 Reasons You Should Use a Trademark Attorney for Your Trademark Search and Registration

By | September 10, 2010

As a trademark attorney and the founder of Gerben Law Firm and TrademarkArmor.com, every day I hear from clients whose trademarks have been rejected by the U.S. Patent and Trademark Office (USPTO).  Many of these clients used one of the non-legal services for trademark registration offered via the Internet — with unfortunate results.  Because I feel so strongly that these non-legal services can be misleading, I have compiled a list of the Top 5 Reasons You Should Use an Attorney for Your Trademark Search and Registration to educate businesses and individuals looking to protect their names and brands.

1. The Trademark Registration Process is a Legal Proceeding

Many of my clients are unaware that the trademark registration process is actually a legal proceeding. When you file a trademark application, it goes through a rigorous review with the U.S. Patent and Trademark Office (USPTO), a government agency.  After you file your application, a trademark lawyer with the USPTO will review your trademark application to determine if your trademark can be registered.  Not hiring a trademark attorney to assist you BEFORE this legal proceeding is akin to skipping the doctor’s visit before surgery and diagnosing yourself — never a good idea.

2. “Free” Trademark Searches Don’t Always Tell You the Whole Truth about the Availability of Your Trademark

A free trademark search will not always “find” the most common reason your trademark application may be denied— a pre-registered or applied-for trademark that is similar, but not identical, to yours.  Thus, any trademark search that is conducted using a free search engine is highly unlikely to provide a full picture of existing trademarks that could cause your trademark application to be denied. This is true even if you use the U.S. government’s publicly available search.

The unreliability of free search results is one reason it is so important to have an attorney assist you with your trademark search. The last thing you want is to spend a significant amount of money (to the tune of $275-$325 in non-refundable U.S. government trademark filing fees) just to file your trademark application, only to have it denied.

3. Only an Attorney Can Help You Interpret Trademark Search Reports

Some online companies provide low-cost trademark search reports for clients.  However, these companies do not (and cannot) provide an analysis of the report, which is essential to understanding the results.  Instead, clients who choose to purchase a report may be given a several hundred-page document.  They are then left on their own to review it for trademarks that could create a legal problem.

I always tell my clients that a company providing you with only a trademark search report is similar to a doctor telling you to read your own x-ray. Unless you know exactly what kind of similarities between trademarks can cause a legal problem, the search report is less valuable than you think.  On the other hand, if you retain my law firm to assist you, we will not only provide you with a search report, but also with a detailed opinion letter from trademark attorney Josh Gerben explaining what the results actually mean.

4. An Attorney Can Provide Valuable Legal Advice and Assistance in Drafting and Filing Your Trademark Application

Many of my clients do not know that the trademark application itself is a complex legal document.  The information provided in your application determines both your trademark rights and affects how broadly the protection on your trademark will extend.  Moreover, the U.S. government has strict legal requirements which must be met as you fill out your application.  If you do not properly respond to the questions posed in the trademark application, the U.S. government may deny your trademark.

Although the trademark application forms are available online, it can be very dangerous to draft a trademark application without the assistance of an attorney. You may unknowingly make a mistake in the application, or your responses may fail to secure the proper scope of legal protection for your trademark.  One of these errors may cause your trademark application to be denied by the U.S. government, and, unfortunately, the government filing fees that accompany each trademark application (between $275-$325) are non-refundable. I always recommend that individuals consult with an attorney during the application process to make sure that the application is properly completed.

5.  Client Beware: Non-legal Trademark Services Don’t Make the Grade

Non-legal trademark services, such as LegalZoom, cannot ensure your trademark application is properly drafted.  This is because the trademark application is a legal document, and only an attorney can provide you with legal advice.  Unfortunately, many non-legal services advertise their services in such a way that it may deceive unsuspecting clients into thinking they are actually getting legal advice.  In actuality, any “service” that is not a law firm is forbidden by law from providing legal advice.  You should always make sure you understand whether or not a “trademark service” is a law firm.

I always tell my clients to remember that an incorrect answer in a trademark application can limit the scope of their trademark rights, cause the denial of their application, and/or allow another company to cancel their registration in the future.  Even though it may be tempting to save a few dollars today by using a non-legal service to assist you with the trademark registration process, it can cost you a lot more— financially and otherwise— later.  If your trademark application is denied, you will lose all the non-refundable government fees associated with the trademark registration process.  Moreover, even if your trademark application is accepted, if you have not properly drafted the trademark application, you could have unintentionally limited your trademark rights.

Josh Gerben is the founder and principal of Gerben Law Firm, PLLC, offering affordable legal services to both small and large businesses. Visit Gerbenlaw.com for more information about assistance with the trademark registration process.

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