Hire an Experienced Trademark Attorney to Avoid Trademark Office Rejections

Resources & Self-Education   |   Friday, May 01, 2020

It is common to question whether hiring an attorney is necessary before filing a trademark application.  After all, anyone can file a trademark application with the US Patent and Trademark Office (the “USPTO”). You don’t need to be a licensed attorney or have any prior experience with trademarks to file an application.  Is it worth investing in counsel on top of the costs to file an application? 

While it may not seem important to work with an attorney at the outset, hiring an experienced trademark attorney can be crucial during the trademark application and registration process. A trademark attorney can advise you about many important legal issues and navigate you through what can be a very confusing process of getting your mark registered.  Bad or uninformed decisions in the trademark application process can lead to the USPTO rejecting your application, delaying the process of you getting a registered trademark by months or years. Potential issues with which an attorney can assist you include: 

  • Determining whether your trademark is available for registration; 
  • Helping you determine what the appropriate filing basis for your application is; 
  • Drafting goods and/or services descriptions that offer you the broadest protection for your trademark, while avoiding rejection by USPTO attorneys;
  • Selecting acceptable specimen of use to show the UPSTO when your trademark is used in commerce, while avoiding rejection by USPTO attorneys; 
  • Respond to “office actions” (criticisms or rejections of your application by USPTO attorneys) that may be issued against your trademark application; 
  • Help defend your trademark if any third parties decide to challenge it; 
  • Help you enforce your trademark rights; and
  • Ensure your registration remains active by preparing and filing all necessary maintenance documents.

While it may seem like an unnecessary added expense at the outset, having an experienced trademark attorney can ultimately save you time and money in the future.  

The good news is that Kronenberger Rosenfeld assists clients with both clearance searches and the prosecution of trademark applications. If you need help with trademark searches, analysis of potential infringement, or trademark applications, please reach out to us.

This entry was posted on Friday, May 01, 2020 and is filed under Resources & Self-Education, Internet Law News.

Kelly Mulcahy

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