Why you need a trademark attorney

When seeking trademark registration, the trademark owner may file an application by himself or hire an attorney to file the application on his behalf. While there is no requirement to hire an attorney to prepare and file the application, it is important to understand the costs, risks and expectations before choosing a registration path.

Costs: The government fee for a trademark application is $325 per class for a TEAS application and $275 per class for a TEAS PLUS application. This fee must be paid regardless of representation. In addition to the government fee, attorneys may charge flat-fees or hourly rates for preparing and filing the application. It is important that you understand all of the fees associated with registering your trademark, as some firms charge a small fee upfront but subsequently raise the prices for handling problems with the application. The Trademark Source offers only one registration package, our $575 complete registration service, to ensure that our clients receive attorney representation from start to finish at one fixed price. This price does not include the government and attorney fees associated with proving use in an intent-to-use application. For additional information on the fees associated with intent-to-use applications, click here.

Trademark Distinctiveness: Before searching the databases for conflicting trademarks, a mark must be distinctive to be eligible for trademark registration. Trademarks fall within three classifications: inherently distinctive, non-inherently distinctive, and no distinctiveness.  Inherently distinctive marks are immediately eligible for placement on the principal register. Non-inherently distinctive marks require a showing of secondary meaning. Marks with no distinctiveness are never eligible for trademark protection. It is important to determine your mark’s distinctiveness before spending time and money filing a trademark registration. There are a variety of factors that affect a mark’s placement within one of these categories; an experienced attorney will know how to identify and, if necessary, fight for placement in the proper classification.

Search: Anyone can search for prior federal registrations by accessing the U.S. Trademark Electronic Search System (TESS). The TESS system allows a user to search for a mark through  its basic word search, their structured search or their free form search.  An attorney will often use a combination of field codes in the free form search to find conflicting registrations. Related trademarks and marks in different international classes may not come up with a basic search, so it is vital that you understand the factors which may lead to an examiner’s rejection. Searching for design trademarks is especially complex because the user must filter through hundreds of design codes to uncover prior marks.   

Office Actions: After the United States Patent and Trademark Office (USPTO) receives your trademark application, an examining attorney may issue an office action to notify the applicant of a problem with the application. The office action will explain why registration is being refused and what requirements must be satisfied to resolve the issue. However, the trademark examiner is not permitted to give legal advice. Office actions are relatively common and can be overcome in a majority of cases by properly responding to each issue addressed in the action. An office action response may be as simple as a phone call to the examining attorney or as complex as a multi-page legal document explaining, in depth, why the applicant should receive registration. An experienced attorney has handled hundreds of office actions and knows how to fight for your registration on the principal register.

Opposition period: A trademark is published for opposition after the trademark examiner has cleared the mark for registration. During this time, any party who believes it may be damaged by registration of the mark has 30 days from the publication date to file either an opposition to registration or a request to extend the time to oppose. The Opposer may allege that the application infringes a registered or unregistered mark, lacks distinctiveness, was obtained through fraud, or it may challenge the application on a variety of other grounds. The opposition proceeding is a trial conducted before the Trademark Trial and Appeal Board. Oppositions are usually expensive and can take several years to complete. You should consult a trademark attorney before engaging in an opposition proceeding.

In selecting a trademark attorney to represent you before the USPTO, it is important that you find someone who has experience handling trademark applications and resolving disputes. We recommend calling several attorneys to learn the market prices and to find an attorney you feel comfortable representing you before the USPTO.

Call us at (888) 501-5743 to speak directly with a Trademark Attorney!
Contact The Trademark Source - (844) 413-1711