Intellectual Property, Business Law, Personal Injury

TRADEMARK ISSUES? WHY HIRING AN ATTORNEY MAY BE IN YOUR BEST INTERESTS

Unique marks are instrumental to the establishment and growth of a thriving business. Savvy businesspeople the world over know the importance of protecting their company's name, slogans and logos from imitators. Every business works hard to develop and capitalize on its reputation and good will, and it is extremely important to keep others from profiting off of that hard work or diluting or diminishing the value of the brand.

In the United States, legally enforceable protection for this type of intellectual property is available through trademark registration. Although you are not required to retain a trademark registration attorney to take advantage of this protection, most trademark applicants do. Why? They are well-versed in the value that quality legal services can add not just to the application process, but to the strength of a trademark over its entire life.

Trademark Basics: What Is a Trademark?

A trademark is, in its most basic form, a brand name or logo. It is a word, phrase, symbol, design or some combination thereof that identifies and distinguishes your goods from all others. When a word, phrase, symbol or design is used to identify and distinguish the source of a service rather than the source of goods, it is referred to as a "service mark." Colloquially, the term "trademark" is used to encompass both trademarks and service marks.

To register a trademark, you must apply to and be approved by the U.S. Patent and Trademark Office. As the owner of a trademark, you have the right to enjoin others from infringing upon or diluting your trademark - and you may even be entitled to monetary relief from anyone who misuses your trademarked material.

Hiring a Trademark Attorney Can Save Time, Money and Trouble

You can file a trademark application on your own, or get one prepared through a discount service. However, what may seem like a good way to cut down on upfront costs can quickly transform into an ill-conceived money pit-in the end, you get what you pay for

For one thing, hiring a skilled attorney maximizes your likelihood of obtaining approval for your trademark during the initial filing. The approval process is similar to an adversarial court proceeding: when you file, government employees will review your documents for deficiencies, conflicts and other issues, and refuse registration if they find any. The fact is, the vast majority of trademark applications are initially denied registration. An experienced trademark attorney can help you avoid most of the common causes for refusal, and can help you navigate your way through a refusal if you happen to get one. As much as meeting all of the technical requirements, your application must be strategically tailored to clearly and precisely identify the goods or services to which the mark will ultimately apply. An attorney can help you draft a thorough and persuasive application that not only stands the best chances of getting approved on the first try, but that also maximizes the scope of the protection you get once your mark is registered. Rapid approval will allow you to aggressively enforce your trademark as you introduce it into the stream of commerce and begin building the good will associated with the trademark - and it also saves you the costs and fees associated with reapplying, which can be quite high.

One of the most critical elements to establishing a trademark, and one of the most likely to cause problems in an application, is selecting a proper name, logo or slogan in the first place. There are dozens of rules and regulations restricting what kinds of words and phrases can be registered and protected as trademarks. For example, only "fanciful," "arbitrary" and "suggestive" names can be registered, while those that are generic or merely descriptive cannot. A seasoned trademark attorney can help you to evaluate the trade name or mark that you have selected, or can guide you in making a selection, so that you don't invest in a trademark that you can never legally register and protect.

An attorney can also prevent costly legal problems by conducting a comprehensive search of federal registrations, state registrations and "common law" unregistered trademarks before you file for trademark protections. This type of search is important because not all legally-protected trademarks are federally registered; such marks do not appear in the U.S. Patent and Trademark Office's Trademark Electronic Search System database. Trademarks similar to yours that are not federally-registered could cause your application to be rejected - or even worse, land you as the defendant in an infringement lawsuit down the road. You need someone who is skilled at ferreting out these kinds of potential conflicts long before you invest substantial money in registering your trademark and developing your brand.

At the most basic level, you are seeking a trademark in order to establish range of intellectual property rights. Another advantage of hiring an attorney is the impact an experienced advocate will have on these rights. For instance, a trademark is only applicable to certain goods and services; an attorney can help you come up with the best way to describe your goods and services in your application such that you will enjoy the broadest, most well-defined protections available to you in the marketplace. Remember, your goal is to grow and use your trademark for the lifetime of your business, so the scope of your protection is something that needs to be carefully addressed from the very beginning of the process.

Finally, an attorney is able to assist with the enforcement of your trademark rights. Once your application is approved, it is up to you to protect your trademark rights - an attorney empowered to act through the courts can take action against any individual or business that threatens to improperly replicate your mark or otherwise diminish its value.

Trademark Applications That Do Not Require Legal Counsel

In a few instances, you may not need the services of an attorney, so long as you are certain that you have selected a proper mark that is eligible for registration, and you intend to use one of the goods and services listings directly from the USPTO's Acceptable Identification of Goods and Services Manual,, which provides very basic goods and services descriptions. But, in most other cases, going it alone can come back to bite you, ultimately costing you exponentially more than it would have to do a thorough job in the first place. Even worse, a shoddy application may cause you to permanently lose rights to a mark you need to further your business.

How are you to know when help is necessary? A competent and experienced intellectual property attorney will be able to evaluate your case and provide a professional assessment as to whether you need legal representation or not. An attorney should be able to explain why you need appropriate legal aid - or tell you honestly and frankly that you do not. If you are in doubt about a potential trademark application, get the facts and contact a trademark registration attorney today.

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