Can I file a trademark myself? Sure, you could. But just because you can doesn’t mean you should. If you’re in the business of inventing and creating, it’s tempting to cut corners to save a buck or two. But you’ve spent countless hours with getting your brand, business, or both to this point. Why wouldn’t you get the best possible protection you can for it? Hiring an IP attorney brings in the specialists to make sure you get the most of your trademark.
Not all instances of using a unique mark merit filing. You may think you need to register a trademark, but an experienced attorney can advise whether or not you actually need to file for one ” for instance, only using your mark locally. There is little benefit in filing for federal registration if your mark won’t be used on a large scale. This will save you time and money in filing fees, attorney fees, and prosecution costs for something that won’t bring a return on your investment. A good IP attorney will let you know if you even need their services.
Most people don’t know that there are restrictions on what is eligible for trademarking. A lawyer can help you determine if your proposed mark is even one that can be trademarked before you start the process. Maybe you’ve got a really great name picked out, but there’s still the possibility of running into trouble when you file. If your name is a generic term, it can’t be trademarked. Likewise, descriptive terms can’t be trademarked unless they have acquired a secondary meaning. Finally, marks also can’t be registered if it’s likely to cause confusion among consumers because of similarity to another established mark. If there is a risk of confusion, an IP attorney can help you identify a new mark that you can build your brand from. Needless to say, the delineation between what is and isn’t eligible to be trademarked based on these parameters can be fuzzy.
Navigating these subtleties alone can lead to unnecessary delays and risks to getting and keeping your trademark. Enlisting the help of an experienced lawyer makes filing and registering easier and gives you peace of mind through the entire process.
Honest moment here: no one sets out to make mistakes. They take time, money, and effort to remedy ” things no one today has to spare. When it comes to filing, it can even mean losing your trademark registration down the road, losing out on profit, or worse.
One mistake filers make is incorrectly describing their good or service, or filing in the wrong class of goods or services. If you claim you’re using your mark with a good or service that you’re not, your trademark can be invalidated, opening it up for attack from competitors. One of the benefits of hiring an IP attorney is that they’ll know the intricacies of your mark and its use as well as what’s expected by the USPTO, and can help you avoid these types of errors.
The second typical mistake is claiming a date of first use prior the legal date of actual first use. Legally, this refers to interstate and intrastate commerce usage. It’s particularly confusing to most people when they need to determine whether or not the usage can be considered commercial, something an IP attorney would be able to differentiate for you. This small detail is a very real basis for invalidating a trademark.
Finally, the Trademark Office is very demanding about the specimen, which is the real-life sample of the mark actually being used that is submitted during filing. If it’s not consistent with the manner in which you filed the trademark, you will inevitably have problems obtaining registration and potentially have to start the filing process over again.
Some trademarks, through extensive and continuous use, can obtain substantial value. Registration is a way to notify others around you of your claim to your mark and hopefully discourage them from adopting something similar. Going through the process of filing gives you ground to stand on should you need to stand behind your mark in court” you don’t have to prove market penetration for your case. When a consumer begins to identify you as the source of a good or service, goodwill related to the quality of the product or service is born and can have substantial value for your brand moving forward.
There are no guarantees that you will obtain a registration or won’t encounter a problem from another similar use. But the risk can be reduced by adopting a mark that is suggestive, fanciful, or arbitrary, and distinctive from other uses.
To demonstrate the extent of damage going it alone can cause, consider this actual occurrence. A client didn’t check for existing similar usage and, over the next nine years, opened seven branch bank offices across the Midwest, only to learn there was a bank in the South that owned a federal registration for the same mark. By this time, the client had spent several million dollars in advertising to develop goodwill in its mark and was at risk of losing the right to use the name. Had the client contacted an IP attorney, a search would have been conducted and the existing mark would have most likely been found, saving millions while allowing the client to switch names in order to build a brand it would be able to continue using.
Congratulations! You’ve registered your trademark. Now you can get rid of that expensive IP attorney you’ve been working with, right? Maybe not just yet. It’s necessary to retain your IP attorney for future work because you’ll have to continue filing paperwork through the life of your trademark to maintain your right to it.
Between the fifth and sixth year of registration, you’ll need to file a statement of continuing use or else risk losing your federal registration. At the end of your ten-year registration, you’ll need to renew it, something your IP attorney can remind you of and pursue on your behalf. There are also some issues that can come up between these set dates related to infringement, assignment of rights, and licensing of rights where you’ll find counsel from a IP attorney valuable.
When you’re looking for a trademark attorney for your mark, look for someone that works exclusively with intellectual property and who has filed a lot of trademarks. There are a lot of general practice attorneys who try to dabble in this area of the law, but without extensive experience, they could leave you more vulnerable. If this is not part of their day-to-day practice, it is easy to make mistakes that cost clients time and money.
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