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I'm debating whether to use a trademark lawyer (at $1300+ cost) or try it register it myself. The most complicated aspect I can see from the USPTO form is describing your goods/services (in that, if you don't do this well I guess the effectiveness of your resulting mark could be reduced). What advantages do lawyers bring to the equation, and is it common to have issues when registering trademarks, e.g. lots of back and forth between you and the USPTO? |
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You're right about properly describing the goods and services, but that's not the main reasons. Here are some: (1) Advice on the strength and registerability of the mark. Among other things, that means looking at similar marks and advising you about how they impact your application. (2) Dealing with office actions from the USPTO -- if, for whatever reason, they don't like your application, the attorney will know how to respond. (3) Dealing with oppositions -- a few months after you file your application, it is made public, and people can object to the mark. Your lawyer will know how to respond to those people. (4) Administration -- just tracking the registration through the process, keeping track of when responses have to be made, etc.... (5) Dealing with foreign counsel. If you're trying to register the mark outside the US, a good trademark lawyer will have a network of foreign associates that they use to prosecute your mark in those other countries. It's certainly possible, and not very difficult, to register a trademark yourself in the US with the USPTO's "TEAS PLUS" application, as long as nothing goes wrong. When/if something does go wrong, that's when you want a lawyer. |
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I registered two trademarks (Virtual TimeClock® & Virtual TimeClock Pro®) without legal assistance in 2010. Before starting, one attorney told me that I'd never get the trademark registered for all sorts of reasonable legal reasons. A second attorney told me I had a strong probability of getting the marks registered. My motivation was a result of name infringement from a competitor in the employee time and attendance software space. When they discovered my filing they did indeed file an opposition. When we stuck to our beliefs, they withdrew and changed their product name. I personally don't see any need to pay a lawyer to do the filing. In the end you have to understand the issues so you can provide the answers and all the evidence. An attorney can save you time by explaining the process to you. Quite frankly though, you're entrusting the entire process to the interest and perspective of one individual. For me, I'd rather learn and ask questions and run the process myself. That way I'm comfortable that we've done everything we can. My advice would be to take some time to learn the process and ask questions. The USPTO web site is really helpful. I found lots of good, readable information there. The online application is quite straight forward once you get your brain wrapped around the intent of their questions. I believe it is common for there to be some back and forth with the USPTO. Patience is a virtue as it took the better part of a year to complete the process. An USPTO attorney is assigned to the case once you file. The attorney assigned to my trademarks was super helpful in shepherding me through the process. |
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