Friday Oct 22, 2021

Do I really need a lawyer to get a trademark?

As an experienced trademark attorney, I am frequently asked if individuals or small businesses need an attorney to register for a federal trademark. The short answer is no, just as technically you don’t need a mechanic to change a car’s transmission or perform a major engine overhaul. However, in both cases, hiring a professional is still recommended.

First, it is essential to conduct a thorough search of all available public records to determine if your proposed name and / or logo are confusingly similar to names or logos already being used in commerce by others.

The United States Patent and Trademark Office website allows you to search public records online for free. However, smart companies hire a third-party research company to carry out this comprehensive investigation. If you try to do that search yourself, you will probably miss something and that could create major problems for you in the future. Furthermore, there are multiple sources of information on unregistered, but still relevant, “customary law” uses that must be considered.

This voluminous investigation will undoubtedly reveal third-party uses that are somewhat similar in some way, shape, or form to its intended use. For example, if you are interested in using the brand “COMPUTER” in relation to jeans, there will be other brands with “computer” on them. Are they confusingly similar? That is the key question, and like most nuanced issues in law, it is often a matter of degree and professional opinion.

Once you are comfortable with the knowledge that the proposed brand name and logo are free from any significant and conflicting use by third parties, there are still a number of questions to ask yourself: Is the brand “generic”, is it say, the name of the class? of goods for which you intend to use it?

For example, the trademark “computer” cannot be registered for use in connection with computers. However, “computer” could theoretically become the brand name for a pair of jeans, because in that context, it is actually “arbitrary” or “fanciful.” Other categories of marks are “purely descriptive”, that is, do they simply describe an attribute of the product you are marking? Is the term “suggestive”, that is, does it not describe but rather suggest a characteristic of the products? A legal professional can assess this problem based on how similar cases have been handled in the past.

If you are still comfortable with the proposed trademark, you will need to file a formal application with the United States Patent and Trademark Office. This application costs a fee of several hundred dollars to thousands of dollars, depending on the number of “classes” of goods or services with which you intend to use the trademark.

Eventually, you will receive a response from an examiner who works in the Trademark Office. That examiner is likely to ask you a series of questions about your proposed brand and will often seek further clarification on your application. BEWARE. Anything you say in response to these questions will become public knowledge as part of the government’s record.

Additionally, anything you do in response to these Office Actions may limit or affect your rights later on. For example, giving up a part of the brand or limiting the kinds of products for which you seek a trademark, may come back to haunt you later. It is easy to give up your rights, but much more difficult (and sometimes impossible) to regain them.

So, to answer the recurring question, technically you don’t need an attorney to apply for a US federal trademark on a new trademark intended for use in commerce. However, it is a long and complicated process, especially if you are not familiar with it. And just like replacing a car’s transmission, it takes skill and experience.

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