The following is an edited transcript of my video Do I Need a Lawyer to File a Trademark Application?.
It is not technically required that you have a lawyer if you are domiciled in the United States when you’re filing a trademark application, but it is strongly recommended. I’m the first to admit I come to this from a bias, but my bias is based on 20 years of looking at people filing trademark applications—many of them who filed without attorneys—and seeing the results or lack of results that come from that.
You see, it’s complicated. There are all kinds of nuances in the trademark application process, such as searching, identification of goods and services, evidence of use, office actions, and it is a very long and winding road to go through that process. In fact, right now it’s taking clients, on average, more than a year to complete the process.
Working with an attorney doesn’t guarantee you success, but it certainly raises the odds, and there are academic studies that confirm this. An attorney who’s experienced in the world of trademarks is going to be able to help you more fully research for possible conflicts, put together a strategy for the application, and ensure that the evidence is proper and the description of goods and services make sense. All of those things go into giving you better odds of success.
It does cost some money, of course, to work with an attorney to file your trademark application. But remember that the USPTO filing fee is not refundable. Those who file without an attorney and end up with lots of mistakes in their applications risk losing their filing fee or having to start all over again—maybe with an attorney—and pay an additional filing fee. We see that all the time when people come to us.
Finally, there’s a lot of correspondence at docketing and deadlines that goes into the whole process with the USPTO, and it’s very nuanced. Working with a trademark law firm that has systems in place to give you support makes it a lot easier on you so that you can focus on what your business does, and let the trademark lawyer handle the nuances of the trademark application. We believe that the ROTI (return on trademark investment) in protecting your trademark and working with a law firm pays many dividends. Yes, there are costs, but the return on that investment is incredible.
