Do you need an attorney to file a trademark? That is a question that many business owners on a budget may be asking when deciding whether or not to invest in a trademark attorney. The short answer is no, as you can file a trademark application using tools provided at the United States Patent and Trademark Office through their trademark service. The service is free to all filers.

Even though you can technically file for a trademark online without retaining an attorney, sometimes the procedures and format requirements can be difficult to file. You must file using the correct basis and description of the product or service. In the event your application contains errors, it could result in a delay or refusal. An attorney does not only file the application for you; they will assist you through the entire process from filing to approval.

Reasons to Contact a Lawyer Before Filing for a Trademark

There are many ways in which a lawyer can assist you with your trademark search:

  • They can conduct a trademark search to see if your trademark holds will pass the likelihood of confusion between your mark and other registered marks or marks that are currently pending registration. A lawyer can advise you on the risk of confusion.
  • Your lawyer can answer questions you have about the trademark registration process that may not be available on the USPTO website.
  • If you plan to file for foreign trademarks as well as trademarks in the U.S., they can assist you and advise you on foreign trademark law.
  • If your filing is refused, they can file a response on your behalf.
  • If you believe someone begins using your trademark without your permission, they can help you enforce your rights. As a trademark owner, it is your responsibility to protect your trademark as well as make sure the proper steps are taken for you to keep your mark active.
  • In the event you are accused of trademark infringement, your lawyer can help you respond and assist you with any legal action that you may face.

How Do You Secure a U.S. Trademark if Your Company is Based in Another Country?

If your business is based in another country, you may still want to try to register your trademark in the United States. Since trademark law is specific to each country, you will need to obtain a U.S. attorney who can help you navigate the process. You can file for a U.S. trademark without an attorney, though the process can be more difficult. If your trademark is rejected, the only ones who can respond are the trademark owner and a U.S.-based attorney.

Retaining the services of a qualified U.S. attorney is important in such situations as:

  • You receive a rejection for your trademark application based on the descriptiveness.
  • The description process is lengthy and has been rejected as vague.
  • You desire to file multiple trademarks in the United States and need a strategy.
  • You are not as comfortable writing in English.

How Can an Attorney Assist You With Your Trademark Registration?

There are many ways in which an attorney can assist you during the trademark registration process. They can:

  • Help you choose the right trademark. They will have experience knowing which types of trademarks and elements that the USPTO is likely to approve. Your attorney will review your mark for eligibility before filing the application, lowering your risk for rejection.
  • Conduct a trademark search to make sure yours is original and meets the requirements for likelihood of confusion. Though you can perform this search yourself, it can be a long process, and your attorney can perform more in-depth searches.
  • Help you properly complete the form. If your form is not properly filled out, it is likely to be rejected.
  • They can create a description that will be considered acceptable. Precise descriptions are important to the application process. Many applications will be rejected due to incomplete or vague descriptions making this a vital section to get right.
  • They can help you communicate with the USPTO. The USPTO may respond with a query or a refusal. In both instances, your attorney can craft a response that may be the difference between approval and rejection.

If you need help determining whether or not you need an attorney to file a trademark, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.