DIY Services vs. Using an Attorney

How to Get a Trademark Registered the First Time You File

There are a lot of online sites that market DIY trademark services for considerably low prices or suggest they can tell you how to get a trademark by yourself. Although it might be tempting to undertake the trademark process on your own for budgetary reasons, there is no substitute for the personalized attention and hands-on legal services offered by a good trademark attorney. Critically, when it comes to protecting your business’s most valuable asset — your brand — it’s essential to take the right steps to ensure every safeguard is in place.

Here are a few things you should keep in mind when you’re researching how to get a trademark and weighing the pros and cons of hiring a trademark attorney, versus the do-it-yourself trademark approach.

Are DIY Trademark Services Worth It?

When you begin your research into how to get a trademark to protect your brand, you may be tempted by DIY trademark services to cut back on costs. However, they can often end up costing you more in the long run.

While the United States Patent and Trademark Office’s trademark registration application may seem like a simple form, the trademark process can be extremely complex. Before the application is even submitted to the USPTO, you may need to make several critical decisions — trademark registration is not always as straightforward as the DIY trademark services might lead you to believe.

Importantly, a trademark clearance search should be conducted before submitting your application. If the results reveal that any marks are confusingly similar to yours, you may need to make some adjustments to ensure successful registration. Searches conducted by online companies are often useless because they provide no analysis of the results, placing your application at risk of denial.

Significantly, the USPTO may reject your application for registration not only if your mark is identical to another — but also if it is confusingly similar. Investing in a comprehensive trademark search conducted by an experienced trademark attorney can help save you from having to pay the costs of refiling your application — or the expense associated with litigation that could have been avoided from the outset.

Additionally, you will need to make legal decisions concerning which class of goods or services your mark belongs in, and provide a description of your mark that satisfies the USPTO’s technical language requirements. Even if an online service offers attorney support, you generally will not get the same personalized attention you would by hiring a trademark attorney who can advise you at every step of the process. When you use a DIY service, you will usually speak with a different attorney every time you call.

Why Hire an Attorney for Your Trademark Application?

Hiring an attorney to handle your trademark registration may be the best option for you and your business. A trademark attorney can offer far more value than a DIY service. Not only can they help ensure your trademark application is filed correctly, but working with a knowledgeable attorney allows you to keep your focus on growing your business.

There can be many pitfalls along the way to the successful registration of your trademark, requiring the assistance of an experienced trademark attorney. In fact, far more trademark applications are approved when they have been filed by an attorney. The USPTO trademark application must be crafted precisely, and an attorney who handles them on a daily basis will know how to ensure it is complete and thorough for the best chance of success the first time you file.

During the trademark process, it is common to receive an office action from the USPTO after you’ve submitted your application for registration. If there are any deficiencies in your application or problems with the mark, the USPTO will provide you with an opportunity to correct the issue.

Office action responses can require nuanced legal arguments to avoid rejection of your mark. Often, they can be time-consuming and may involve legal research. A skilled trademark attorney will know how to efficiently respond to any office actions to get your trademark registered as quickly as possible.

Significantly, when you work with a trademark attorney from the beginning of the registration process, you’re not simply using their legal services — you’re building an important and long-lasting business relationship. Trademark matters do not end once your mark is registered. Trademarks need to be continually monitored for infringement and renewed every ten years. An attorney can also offer you strategic advice and represent you in litigation that should arise along the way, and assist you with registering additional marks as you build your portfolio.

Contact an Experienced Trademark Attorney to Assist You With the Registration Process

It can be tricky to figure out how to get a trademark registered. Choosing the right trademark attorney to help you with the registration process is crucial for the success of your business. Based in Ann Arbor, Michigan, the Trademark Lawyer Law Firm, PLLC is committed to helping entrepreneurs and small business owners grow thriving companies. Having successfully registered more than 5,500 trademarks with the USPTO, we take the time to get to know each client and the unique needs of their businesses for the best possible results. Contact us today to schedule a complimentary 15-minute consultation with an experienced trademark attorney.

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FAQ

What are Trademark Application Suspensions?

Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.

What are Disclaimers for Trademarks?

A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.

A good example of this is disclaiming “café” if your services are for a café.

What is the Supplemental Registry?

If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.

In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.

What is the Date of First Use?

Two dates must be specified in a trademark application:

Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.

Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.

What is the Renewal Timeframe for a Trademark?

The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.