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Why Hire a Private Trademark Attorney

Why Hire a Private Trademark Attorney

Filing a trademark application with the United States Patent and Trademark Office (USPTO) starts a legal proceeding that is governed by U.S. law. While you may represent yourself in this legal proceeding, most applicants hire attorneys who specialize in trademark matters. Many continue to use attorneys after their trademarks are registered.
A private trademark attorney licensed to practice law in the United States can give you legal advice, help you avoid pitfalls with your application, increase your likelihood of getting a registration, and help you enforce your trademark rights.

What a private trademark attorney can do for you
While a USPTO trademark examining attorney will try to help you through the process even if you do not hire an attorney, USPTO employees cannot give you legal advice.

1. A private attorney can provide legal advice
Do you know if your chosen mark is protectable? Can you accurately identify and classify your goods and services in an application? Are you prepared to respond to a refusal to register your mark? An experienced private trademark attorney who is licensed to practice law in the United States and authorized to practice before the USPTO can advise you about these and many other issues.

2. A private attorney can conduct trademark searches
An attorney can help you avoid costly legal problems by conducting a comprehensive trademark search before filing your application. In addition to searching the USPTO’s database of federally registered marks for potentially conflicting marks, a comprehensive search will also search state trademark registration databases and other sources for common law unregistered trademarks. Even trademarks that are not federally registered, but are similar to yours and used for goods and services related to yours, could ultimately bar you from using and/or registering your trademark.

3. A private attorney can help you understand and enforce your trademark rights
It’s your legal responsibility to monitor and police your trademark and protect it from infringement. An attorney can help you understand the scope of your trademark rights and advise you on the best way to monitor and enforce those rights, including what to do if you discover other parties are infringing your mark or if other trademark owners claim that you are infringing their marks.
After registration, an attorney can help ensure that all required registration maintenance documents are timely filed years later, so you maintain your registration for as long as you use your mark.

4. A private attorney can represent you before the USPTO’s Trademark Trial and Appeal Board
If someone wants to prevent your trademark from registering, they can file an opposition. If someone wants to cancel your existing registration, they can file a petition to cancel your trademark. Oppositions and cancellations are similar to proceedings in a federal court, but are held before the Trademark Trial and Appeal Board (TTAB), an administrative tribunal at the USPTO. The TTAB also handles appeals of final refusals issued by USPTO trademark examining attorneys. Because the legal issues in these proceedings can be complex, using an experienced private attorney who is licensed to practice law in the United States is highly recommended.