Why Should You Use a Trademark Attorney?

Question 1: What can an experienced trademark attorney like Annette P. Heller do for me?

She can help you avoid costly mistakes in the selection and use of your product or service trademark. With a trademark search, Annette can advise you of the risks associated with trademark use, and through review and evaluation of appropriate trademark searches, assist you to adopt a mark that reduces your risks. Then she can file and prosecute your application with a higher success rate than if you filed the application yourself [See Question 2 Below]. If you want advice pertaining to your situation, together with the benefits of working with an experienced trademark lawyer, then Annette is the Trademark Attorney for you.

Question 2: Does Using a Trademark Attorney Increase Your Chances of Obtaining a Registration?

Yes! An article on April 10, 2013 in the Wall Street Journal (click here for article), reports that trademark applicants represented by attorneys are 50% more likely to get through the registration process than those that who go it alone. The article refers to a study done by two law professors at the University of North Carolina School of Law. According to the article, the study found that on the average 43% of applications filed by individuals ultimately registered while those that used an experienced trademark attorney had a success rate of 60%. The applicant's chances of success increased when a rejection was issued by the Trademark Office to 68% when using an experienced trademark attorney. Although the study is still in draft form, here is a link to the draft copy of the study: Do Trademark Laywers Matter?.

Question 3: When should I hire a trademark attorney?

You should engage the services of an experienced trademark attorney you are starting a new business or whenever your company is considering launching a new product or service. The best time to get a trademark attorney involved is before you have committed significant resources and money to a particular trademark.

If you have already adopted and used a product or service trademark, it may be wise to have a search done to discover potential conflicts with other trademark owners. This can help you make an educated decision about continued use of your trademark, before any issues arise.

An experienced trademark attorney can guide you through the formalities of the application process. Even if you have already been using the mark for some time, a trademark attorney can advise you whether it makes sense to apply for federal registration, and if so, can skillfully draft your application to help avoid objections by the government trademark examining attorney.

Question 4: What are the other benefits of hiring a trademark lawyer?

Hiring a trademark attorney may seem expensive. But if you compare the cost of engaging an experienced trademark attorney to the cost of litigating a trademark dispute, or the cost incurred if you have to stop using a mark after spending years building up the value of the mark through advertising and marketing campaigns, it becomes clear that hiring a trademark attorney is the less costly alternative. Trademark use does involve risk. But consulting with a trademark attorney will help minimize the risk as much as possible.

Also when most businesses have a web site that gives exposure nationwide, a federal trademark registration will protect you since, under the Lanham Act, your trademark registration is constructive notice to others of your trademark rights. It can also protect your domain name through the ICANN proceedings.

Besides trademark clearance and prosecution of applications for registration, a trademark attorney can help enforce your trademark. Your trademark attorney can advise you whether it makes sense for you to take action to stop a potentially infringing use. In addition, your trademark attorney can assist you if you receive a cease and desist letter demanding that you stop using your trademark.

Question 5: Why shouldn't I use a non-attorney agent to do a trademark search or file the trademark application?

Although a non-attorney can do a search, only an experienced trademark attorney can give you a legal opinion as to the availability of a trademark for adoption, use and registration. In addition, a non-attorney may do little more than fill out forms, and charge you for it. Although using a non-attorney service, such as Legal Zoom, will undoubtedly be cheaper than hiring an experienced trademark attorney, remember - you get what you pay for.

Conclusion:

If you are looking for an attorney to simply take your information and draft and file your trademark application, Annette is not the attorney for you. But if you want advice pertaining to your situation, together with the benefits of having an experienced trademark lawyer draft your trademark application following consultation and recommendation and being there throughout the process, please give Annette a call.