USPTO answer to “Should I hire a trademark attorney?”
The United States Patent and Trademark Office (USPTO) recommends hiring a trademark attorney to “help avoid potential pitfalls”. However, using an attorney is not mandatory. The owners of a trademark can choose to file an application by themselves. If you choose to take this route, be aware that roughly 83% of TEAS applications receive rejections in the form of Office actions that start a deadline for your response and often require you to present counter legal arguments. In addition, statistics prove that applications filed by attorneys are 50% more likely to be successful than those filed by non-attorneys.
- Hiring a trademark attorney can make your trademark application 50% more likely to register.
- 83% of applications receive an initial rejection.
Don’t worry I can do it
If you are filing a trademark application and are not 100% sure you are filing it correctly you should hire a trademark attorney. Otherwise, you can lose your government filing fee, submit an application that gets rejected via an Office action or worse, file an application that gets noticed by the actual trademark owner, who then notifies you to cease and desist or sues you for trademark infringement. You’ll need someone who is authorized to practice before the United States Patent and Trademark Office. 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.” Applicants always have the option of representing themselves. However, this rule pertains to individuals assisting trademark applicants. As a result, it’s important that the person submitting the trademark application on your behalf is a licensed attorney or otherwise lawfully allowed to practice before the United States Patent and Trademark Office. Trademark applications and registrations filed by those unauthorized to practice before the United States Patent and Trademark Office will end up being void. When you retain trademark registration services it’s important you hire a service that uses licensed attorneys to file your registration.
- If using someone to help you file, make sure they are attorneys or otherwise authorized to practice before the Trademark Office
Oops! I did not hire a trademark attorney
Don’t worry. It’s not too late. If you received a trademark Office action from the USPTO rejecting your mark contact an attorney to review the rejection. Often those rejections can be overcome with legal arguments against the Examiner’s opinion. Be careful if you decide to respond on your own because some actions the Examiner recommends can weaken your mark.
- A trademark attorney can help save your trademark application.