You may want to contact a trademark attorney if…
20 November, 2019
This is your guide to understanding when you may need the expert help of a trademark attorney.
The world of trademarks can be difficult to navigate for small business owners. Not only are there multiple stages involved, from name creation and research, to ownership and protection, but there also are many different types of services available from different providers to help you at each point. Law firms often specialize in top-tier comprehensive packages that include the works – trademark searching of multiple jurisdictions to confirm availability, registration with the U.S. Patent and Trademark Office (USPTO) along with office action responses, and subsequent monitoring to catch any infringement – but, depending on the scope of your business, this level of service may not be budget-friendly. Small business owners willing to do some of the legwork around researching, filing, and protecting their desired trademark have additional options. Services like the USPTO’s trademark database search, which can help you find information about previously filed marks, are basic but free, and can be a good starting place. Trademark.com is also a self-service option, offering more powerful, intuitive tools, and higher quality data to help you vet, secure, and protect your desired mark at an affordable price.
If you’ve chosen this second, more hands-on approach to trademark ownership, good for you! As you dive in, you’ll find that trademark basics aren’t nearly as confusing as they may at first seem, particularly with the help of educational materials like Trademark.com’s blog, resources, and glossary to help expand your knowledge without all the legal jargon. In the majority of straight-forward cases, these sources should be enough assistance to answer your questions or clear up points of confusion.
However, as with many things in business, trademark processes and information are not always clear-cut.
When in doubt about a trademark matter, it’s smart to contact an IP attorney to help you make sense of your particular situation.
While Trademark.com does not provide legal advice, we’ve put together a list of common obstacles entrepreneurs may face when searching, registering, or monitoring their trademark that can mean it’s time to call in an expert.
In the U.S. and many other jurisdictions, you can’t register a trademark that would likely cause confusion with other marks. A trademark search can help alert you to possible conflicts before you even start the application process. It’s a good idea to be thorough, checking not only the USPTO’s trademark data, but also other unofficial sources like business registries, social media, online marketplaces, and the web more generally.
Identical / highly similar match
If you search USPTO trademark data for your desired trademark and discover that someone else has already registered it for a business, product, or service similar to yours, this means that the USPTO likely won’t register it because it’s already taken. You’ll probably need to find a new, available name. If you’ve already begun using this mark for your business, it could be worth contacting a trademark attorney to review your situation. If you can demonstrate that you’ve been using the mark longer than the registered owner, you may have local rights to the name. If not, you may be committing trademark infringement by continuing to use it. It’s helpful to have the opinion of an expert either way.
If you do business internationally or seriously plan to expand into other countries at some point in the future, it’s wise to check the trademark data from these jurisdictions before you file to register your trademark. However, the laws governing this form of intellectual property differ around the world. A trademark attorney with knowledge of local laws is best positioned to help you order and interpret the results of a search like this.
High value brand(s)
The more equity you have invested in a brand name, the greater negative impact infringement can have, so you may want to be extra thorough about your trademark search prior to registration. Trademark attorneys have access to specialized tools and data sets that may uncover conflicts that you wouldn’t be able to identify on your own. If you’ve got a lot at stake, you likely won’t regret investing in expert advice for additional confidence in your trademark.
Trademark Registration with the US Patent and Trademark Office
Although many U.S. states maintain registration systems, registered trademarks traditionally refer to registration with the USPTO only. Federal registration of a trademark can give business owners legal advantages, as it confirms nationwide validity and ownership of the mark and date of usage, which can be useful in litigation.
Foreign domicile (a.k.a. you and/or your business is based abroad)
U.S. residents may file their own trademark registration application with the USPTO or hire a U.S. licensed attorney to do so on their behalf. However, if you or your business is based abroad, the USPTO requires you to work with a U.S. licensed attorney.
The USPTO may issue several different types of office actions about your trademark application. An office action is an official letter sent by the USPTO, listing any legal problems with your chosen trademark and/or the application itself. You have to resolve all legal problems in the office action before the USPTO can register your trademark. Depending on the issue at hand, you may be able to respond by making simple revisions, such as clarifying your goods or services. Larger issues may require calling or emailing the examining attorney at the USPTO. Unless you have the time to learn about the different types of office actions, what they mean, and what they require in response, you may want to enlist the help of a trademark attorney to advise you or manage the process for you.
For pending trademarks in the U.S., there is a 30-day period for the public to object to the registration of a trademark with the USPTO. This is done by filing an opposition notice, explaining why the mark should not be registered. Oppositions are most commonly filed when someone believes that a mark is confusingly similar to an existing mark, or is descriptive, generic, or deceptive . Once received, the owner of the application has 30 days to respond with an answer. The Trademark Trial and Appeal Board then conducts a proceeding (a mini trial based on written records) and issues a final decision. Since oppositions are complex legal proceedings, this is another instance when you’ll probably want to call in a trademark attorney for expert assistance since they are familiar with the process and can help you achieve the best possible outcome for your business.
Trademark monitoring is a critical aspect of responsible trademark ownership, because it helps you stay aware of copycats and gives you the opportunity to enforce, and thus maintain, your trademark rights. Did you know that it’s possible for someone else to successfully register a mark similar to yours, even if you’ve already secured your rights through the U.S. Patent and Trademark Office (USPTO)? Trademark monitoring services like Trademark.com’s, which send alerts about possibly conflicting marks recently filed with the USPTO, can help you get ahead of any problems.
Identical / highly similar match
Look out for marks that are identical or highly similar to your registered mark, and are also in an area of business similar to yours when reviewing your trademark monitoring Alert Report. If you come across a newly filed mark with both of these characteristics, or if you’re unsure, there could be a threat to your brand. A trademark attorney can help you assess the situation and determine the course of action that makes the most sense for you business.
How do I find a U.S.-licensed trademark attorney?
To find an attorney who can represent you before the USPTO in trademark matters, the USPTO recommends searching the internet, or contacting the attorney referral service of a U.S. state or local bar association (see the American Bar Association’s Consumers’ Guide to Legal Help). The USPTO also recommends making sure that the attorney you hire has experience prosecuting trademark applications at the USPTO and handling proceedings before the Trademark Trial and Appeal Board.
The following resources also offer free or reduced-fee legal services:
- The USPTO’s Law School Clinic Certification Program allows law students enrolled in a clinic program to practice intellectual property law before the USPTO under the strict guidance of a law school faculty clinic supervisor.
- The American Bar Association posts a list of Pro Bono IPL Resources in the United States.
- The International Trademark Association (INTA) has also established the INTA trademark pro bono clearinghouse pilot program.