Why pay an attorney handle your trademark application?

It saves you time, and prevents procedural mistakes.

Many business owners want to have an attorney file their trademark. It is comforting to have a member of the profession guiding you through the process. The USPTO forms can be confusing. There are many trademark concepts to understand, such as dates of first use, specimens, intent-to-use, the goods and services description, and goods and services classification. In addition, because it takes about three months to have an examining attorney review an application. If you make an error, you are looking at not only lost money, but lost time.

An attorney can help you avoid choosing a name that won’t register.

The errors that business owners make are not always procedural or with the forms, but in the selection of the trademark itself. On many occasions I have had someone call me with an idea for a name that they want to trademark (and are sometimes very emotionally committed to), only to have me explain that it is likely to be found descriptive or generic. Or , alternatively, to discover with 15 minutes of research that any application would be likely to fail because of prior registrations.

The best process for choosing a name has the marketing and legal aspects moving in tandem. This usually means having the marketing or branding team (often just the entrepreneur or founder) come up with several names would work for the business. Then, have a lawyer evaluate how likely they are to succeed in being registered as a trademark.

Attorney judgement is helpful in borderline cases.

And in many cases there is a fuzzy between what is registrable and what is not. There are definitely some trademarks that are clearly “confusingly similar” to an existing mark, or descriptive or generic. But there are a lot of borderline cases, where the success or failure of the application will depend on the judgment of the examiner. In such a case an attorney can help you evaluate what the odds of success are. Perhaps in another decade there will be artificial intelligence algorithms that can look at all of the prior decisions, and evaluate the actual odds of success for a particular proposed mark. But for now, the next best thing is the educated guess of an attorney (like me!) who has seen a large number of trademark applications succeed or fail, and who is familiar with the standards of interpretation used by examiners.

Contact me!

If you want to contact me to discuss your trademark ideas to see if we are a good attorney-client fit, please send me an email or call. You may also want to read my post on my flat-fee arrangement that pertains to most types of trademark applications.

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