• August 3, 2020
  • Brent Sausser
  • 0
Best Choice Trademark Attorney

When looking for quality trademark lawyer or trademark registration services people will often search for the “best trademark attorney” in hopes of coming across a list of reviews or rankings. The term “best” is subjective and depends on various factors. However, we’ve provided a list below of characteristics that you should look for in your search for the “best trademark attorney” or the “best trademark registration services.” 

Best Trademark Attorney Characteristics

When filing a US trademark with the United States Patent & Trademark Office (“USPTO”) and you are selecting an attorney to file or prosecute your trademark it’s important to determine the person’s qualifications. First and foremost you should seek a licensed trademark lawyer instead of general legal advice from non-professionals such as trademark consultants. The USPTO even recommends hiring an attorney to assist with the process. While trademark consultants can give you advice regarding trademark availability or name marketability, they will not be able to file the trademark for you or give you legal advice. According to the Rules of Practicing in trademark cases, “Individuals who are not attorneys are not recognized to practice before the Office in trademark matters.” This rule pertains to individuals assisting trademark applicants. When looking for someone to help you file, look for a licensed trademark lawyer.

Next, you should look for a lawyer who regularly practices trademark law. Experience is always key. A lot of attorneys practice many different aspects of law. Make sure one of the subjects your attorney covers is trademark law.

Lastly, make sure the attorney you hire will continually give you updates throughout the trademark registration process. If you receive an Office action from the Trademark Office you will then have 6 months to respond. Failure to respond may result in your trademark application being abandoned. If your attorney simply files the mark, and does not provide you updates through the process you may miss these deadlines. Where an attorney or domestic representative has been appointed, the USPTO will correspond ONLY with the listed appointment. Therefore, you will not receive notices if you have a listed attorney of record. Your attorney will receive the notices.  Make sure your attorney updates you during the entire trademark registration process so that you don’t miss deadlines.

I hope this information helps in your search for the best trademark attorney.

  • Use a licensed trademark lawyer.
  • Use a trademark attorney with experience filing trademarks.
  • Make sure your trademark lawyer gives you notifications during the trademark application process.

Best Trademark Registration Services – What to Look For

This is a bit of a misnomer. Ideally you want to hire a lawyer. Trademark attorneys are the only ones authorized to provide advice or file a trademark application. The USPTO makes this clear: “Our regulations specify that only an attorney who is an active member in good standing of the bar of the highest court of any U.S. state or territory can represent you in a trademark application.” 

To all those that hire non-lawyers to assist in the filing process please be aware that this could impact your trademark’s validity. Specifically, the USPTO states: 

“We take the unauthorized practice of trademark law very seriously. Your trademark submission can be rejected, or the legal validity of your trademark registration could be jeopardized, if you take advice or receive assistance from someone who is not authorized to practice law before the USPTO.”

  • Hire a trademark lawyer.
  • Don’t use “trademark consultants” who are not authorized to file with the USPTO.

How do I Prevent Having to Refile My Trademark?

Simple. File correctly the first time. Filing a trademark is not complex. However, if key aspects are missing or incorrect the application is “void ab initio” or void from the beginning, and refiling will be required.

The easiest way to avoid this is to make sure the info you enter into the application is correct the first time. This will include ownership of the trademark. For example, a corporation with multiple shareholders should not file in the President’s personal name. The owner is the one/entity who ultimately controls the trademark and the goods/services associated with that mark.

Next, you want to be sure the goods and/or services description is accurate. For example if you sell electronic goods, you wouldn’t want to file for research and development services, even though you have a research and development department. The goods/services description should be what goods/services you provide to consumers, not what departments you have in-house.

Also, you want to make sure the dates of first use are accurate. The USPTO requires two dates when filing, the date of first use anywhere, and the date of first use in interstate commerce.  

  1. Date of first use anywhere: when you first used the trademark in relation to the goods/services in commerce anywhere.
    • This would be when you first used the name/logo in relation to the goods and services you offer to any consumer regardless of state lines.
  2. Date of first use in interstate commerce: When the trademark was used in relation to the goods/services and the goods either were branded and traveled across state lines or were sold across state lines or the services were rendered across state lines or to people from out of state.
    • This date is when you began selling goods or providing services to consumers from another state.
  1. Make sure to file in the correct owner’s name
  2. Make sure to file for the correct goods/services tied to the name
  3. Make sure use dates are accurate

Don’t File Blindly

Make sure the company will not simply copy and paste the information you give them into an application. The information you provide should be combed over and corroborated with discussions about your business from the filing professional. All the above items need to be verified prior to filing. This can prevent you from filing infringing trademarks. Remember all trademark applications are public. For example, and attorney would advise you not to file NYKEY for shoes saving you major headaches down the road. Whereas a filing service processing your info may not. Don’t put yourself at legal risk. Use a professional to file who reviews your information prior to filing your trademark.

    1. Be wary of anyone who either simply takes your information and has an application ready to go or one that does not talk to you at all prior to filing.
    2. Don’t file a trademark that has not been reviewed by a professional.

Who is the “Best Trademark Attorney”?

You do the research. Call around to the trademark attorneys in your search. Make sure they match the qualifications identified above. Find out their process for filing and their experience. Go with who you like and who you find to be the best qualified to file your trademark application. Who is the best trademark attorney? It’s up to you.

  • You Decide.