When Do I Need a Trademark Lawyer?

What's the first thing you should do after coming up with a catchy business name, slogan, logo, or phrase related to your product or service? Trademark it. Trademarking a unique business identifier allows you to protect it from use by competitors.

But the federal trademark application process can be tricky and you need to decide whether to hire a trademark attorney to help you file or to follow a do-it-yourself approach.

What is a trademark?

Trademarks protect brand names such as “Gatorade," symbols such as the "Golden Arches" of McDonald's, and slogans such as Nike's “Just Do It," in addition to words, phrases, designs, and product labels associated with the products or services of a particular business.

These names, symbols, and slogans have all gained worldwide popularity and recognition through successful marketing campaigns. That is, they have value. Since you want your symbol and slogan to also have value, take steps to protect your continued, exclusive use of them.

How do I apply for a trademark?

To achieve nationwide protection under federal law, a trademark must first go through the trademark application process.

Applications for trademarks are filed with the United States Patent and Trademark Office (USPTO). The application must include proper identification of the trademark, as well as a description of the class of products and/or services involved.

Once an application is filed with the USPTO, an examining attorney will conduct a comprehensive search to determine whether a conflict exists between your proposed trademark and any other existing registered or pending trademarks.

The trademark application may be submitted online using the Trademark Electronic Application System (TEAS) or another online service. The USPTO also accepts paper applications, though electronic filings are preferred.

What are the benefits of registering a trademark?

Obtaining a federally registered trademark allows you to distinguish your product or service from your competitors' product or service. When the USPTO provides its stamp of approval on a trademark, a legal presumption of ownership is created that provides the company the exclusive rights to use the trademark in connection with its products and services.

The presumption of ownership and exclusive rights, in turn, give the business legal standing to bring a federal lawsuit against any individual or entity that infringes upon the trademark.

If the lawsuit is successful, the offending party will be prohibited from using the trademark, and may be ordered to pay damages or other statutory penalties.

How much will this process cost?

Electronic trademark filing fees currently range from $225 to $400 per class of goods or services, depending on the type of application you file, according to the USPTO website. The cost of filing a paper application is currently $600 per class of goods or services.

Additionally, every 10 years you must file an application to renew your trademark registration. USPTO fees for trademark renewals are currently about $300 for an electronic application and $400 for a paper application.

The USPTO employs certain factors to calculate the filing fee for an initial application, including the number of trademarks, number of classes, and chosen filing option (TEAS Standard or TEAS Plus). You may only apply for one trademark per filing. The filing fee is not refunded if the trademark application is rejected or denied.

In addition to filing fees, the cost to hire a trademark lawyer can range from a few hundred dollars to a few thousand dollars, depending on the complexity of your situation and other factors. Some trademark attorneys charge by the hour while others will handle your matter for a flat fee.

When should I consider hiring a trademark lawyer?

You can apply for a registered trademark on your own, but the expense of hiring a trained and licensed trademark lawyer may outweigh the potential pitfalls of going it alone.

To evaluate whether you need to hire a trademark lawyer, first understand what trademark lawyers can do for you. They routinely:

• Offer legal advice on the use, adoption, selection, and registration of new trademarks
• Conduct thorough trademark searches using the USPTO's Trademark Electronic Search System
• Evaluate the strength of the proposed trademark and offer legal advice on how to select a trademark that is unique and won't likely be confused with other marks
• File applications to register new trademarks that meet the complex USPTO requirements
• Provide advice on how to address trademark infringement and enforcement issues

If you file for your trademark yourself, you run the risk of selecting a proposed trademark that is not unique enough or free of conflicts with existing marks. Additionally, if issues arise with the trademark, you will be pitted against a skilled examining attorney without an attorney to advocate for you. Further, in the case of an infringement issue, will you know how to file suit in order to assert your position?

While the DIY course of action is less expensive if done correctly, if you fail to meet the strict filing requirements and deadlines, it may cost you more time and money in the long run, particularly if you miss out on the opportunity to preserve your mark.