What Is The Purpose of a Trademark Lawyer?
Trademark attorneys assist with identifying your trademark, completing a trademark search, and creating a filing strategy. They also draw up the trademark application and handle responses to any actions or refusals by the United States Patent and Trademark Office (USPTO).
If you live outside the US or its territories, you must have a US attorney. As a resident, you do not need an attorney to represent you.
Nevertheless, a licensed United States attorney can be a crucial asset when applying for a trademark registration. Namely, lawyers with extensive practical knowledge in trademark law serve as a vital resource with regard to advisement. To start with, an attorney assists with deciding if your trademark is protectable. Not all chosen trademarks can. In addition, legal counsel can help you select the most suitable filing option for your application. When going through that process, a lawyer can ensure the preparation and filing of your trademark application is complete, and that it appropriately identifies the goods and services you want to register.
Trademark Lawyer: Crucial Asset
An attorney can handle all of the communication required during the registration process. In the event that a USPTO examining attorney, for example, has questions or refuses to register the trademark, a lawyer may successfully navigate those inquiries or discrepancies. When it comes time to show that your trademark is being used in commerce, your attorney can guide you toward choosing an effective piece of evidence to present to the USPTO.
Once your trademark is registered, attorneys help you understand your trademark rights. Also, how to enforce those rights. If any challenges to your trademark arise from your competition, a lawyer can greatly benefit you in terms of defense. When you need to maintain the registration, an attorney can prepare and file the necessary documents.
Trademark Attorney & Clearance Searches
One of the most important aspects of registering a trademark is checking its availability. Attorneys are highly qualified to conduct a clearance search. What is the point of a clearance search? To ensure a similar trademark is not already registered with the USPTO. What if your trademark is too similar to an existing mark? You might be blocked from registering it. What if that similar trademark is not federally registered? You might still encounter issues that can cause expensive legal issues down the road.
You can rely on a lawyer to carry out an exhaustive search of the USPTO database of federal and state registered trademarks. And, to find any potential issues with unregistered trademarks under common law rights. All of which happens prior to the filing of your application.
Enforcement and Maintenance of Trademark Rights
In the US, you must protect your trademark against any possible infringement. An attorney can fully explain what rights you have as a trademark holder. Your lawyer can also share strategic methods for enforcement of your rights. You might find out another party is committing trademark infringement. Or, someone can claim you have engaged in infringement. An attorney will guide you through how to respond and reach a resolution. Once your trademark is registered, you can rely on an attorney to accurately meet all your ongoing registration requirements in a timely fashion.
Trademark Trial and Appeal Board
It is possible that an examining attorney at the USPTO may refuse to register your trademark. In that case, you can file an appeal with the Trademark Trial and Appeal Board (TTAB). If another party observes a possible conflict or potential harm, either by the registration of your trademark or your current trademark registration, they can pose a challenge. They can file for an opposition or cancellation with the TTAB. You also have the power to file an opposition or cancellation.
The trial proceedings associated with oppositions and cancellations are akin to federal court litigation. An attorney should handle those proceedings. Especially if you wish to present a strong defense or reach a favorable settlement of the dispute.
Benefits of a Registered Trademark
Most entrepreneurs intend to make their business as successful as possible. A major part of building toward that success is protecting your intellectual property against any kind of theft. Failure to register your trademark or trademarks could force you to rebrand your entire business. Not only that, it could cost you your business or make you go bankrupt.
Notice of Ownership, Enforcement, Trademark Attorney
The first benefit of registering your trademark is that once you file your application, the mark you are seeking to register is made public in the USPTO database. The application serves as a public notice of your ownership claim. The USPTO is a first to file system. If anyone attempts to register a name that is the same as yours, or so similar as to cause possible confusion, the USPTO will give priority to the one who filed first. From a legal stance, the first business to use the mark in commerce reserves the right to that mark.
However, if there is any kind of challenge posed, the USPTO presumes the right to the trademark should be granted to the first to file. So you are more likely to retain the right to a trademark even if challenged. Why? Because you filed the application at an earlier date. Of course, when your trademark is registered, you are then permitted to use the ® symbol to deter anyone from using a similar name as yours.
The second benefit of registering a trademark is that it enables you to enforce your rights. At minimum, the process of registering a trademark with the USPTO takes 12-18 months. Once you have the registration certificate, you may send cease and desist letters if you discover infringement, and/or file a lawsuit in federal court, if necessary.
Border Enforcement, Brand Value
Another benefit is border enforcement. This mainly applies to companies who sell goods that are imported from other countries. You can file your trademark registration with the United States Customs and Border Protection (CBP), which can prevent any infringing goods from entering the country. As an Amazon seller, for example, you can protect yourself from counterfeiting by having the CBP check the brand name on the packing slip of any imported items, assess if the brand is registered to your trademark, and stop the entry of any infringing goods.
An additional benefit is that trademark registration increases your brand’s value. Registration allows you to license your brand for others to use and thereby collect licensing fees. Similarly, trademark registration permits you the right to franchise your brand or company if you intend to expand your reach.
The final benefit of trademark registration is that it gives you the power to sell your business with all ownership rights at its maximum value. Investing in trademark registration at the outset dramatically raises the value of your brand over time. If a future buyer sees that you did not register your trademark to your brand, it may decrease the value of the business, costing you a substantial amount of money.
Up next we will be discussing Filing for Copyright protection.
