The Trademark Registration Process: Why Having a Lawyer Matters at Every Step
Creating and growing a new business has never been easier, thanks to our increasingly interconnected digital world. The downside of this, however, is that brands have never been so at risk of losing everything they’ve built thanks to intellectual property theft, at the mercy of malicious actors who lift brand elements, steal designs, and even copy entire businesses and market them as their own—often cloaked in anonymity behind a screen.
Because of these risks, trademarking your brand is more critical now than ever. However, while the process is essential, it can be complicated. Read on to learn why working with a trademark lawyer can save you time and money and protect your business for years to come.
Trademarking is Important, But Not Simple
Trademark registration, in theory, sounds pretty straightforward. You have a name, design, logo, or other asset you want protected. You register the asset. Now it's yours, and nobody can steal it. Right? Like most things in life, trademarking is not quite that easy. The trademark process requires several necessary steps, each essential for ensuring your trademark is approved and accepted by the United States Patent and Trademark Office (USPTO).
Many small business owners attempt to cut costs by filing for their own trademarks. However, the trademark process is a complicated legal matter and can be exceptionally confusing for those not trained and educated in trademark law. Attempting to DIY a trademark often makes the process more expensive, risky, and time-consuming. A simple mistake, error, or misstep could end up causing a massive headache that takes months to correct, which is why many small businesses choose to work with an experienced trademark attorney.
The Trademark Registration Process: How a Lawyer Can Help Secure Your Brand at Every Step
Ensure you obtain powerful trademarks to protect your business by hiring a skilled lawyer to leverage their expertise to support you before, during, and after the trademark application process. Here’s how a lawyer can assist your business at every stage.
Determine Eligibility and Do a Trademark Search
The United States Patent and Trademark Office does not accept every trademark application. Many trademarks are rejected each year for a variety of reasons, such as:
The trademark is too close to a currently held trademark
There is room for confusion about the trademark, or the USPTO feels the trademark is intentionally or inadvertently misleading
The trademark is too generic
A skilled trademark lawyer can help you identify assets that aren’t specific enough, have confusing elements, or contain other potentially problematic characteristics. A trademark lawyer could also help you conduct a trademark search, an essential and comprehensive crawling of several trademark databases, including the USPTO Trademark Electronic Search System (TESS).
The general public has access to some of the USPTO databases. However, trademark lawyers have more tools and resources at their disposal to conduct more thorough searches. Ensuring your trademarks are unlikely to be denied will save you time and money. If the search concludes that your logo, design, or other asset is too similar to an already-held trademark, you can make changes before attempting to register.
Remember that the trademark registration process can take up to a year, so working with an attorney to conduct a thorough trademark search is critically important.
2. Apply For the Trademark With USPTO
Working with a trademark lawyer increases your likelihood of submitting the best application for your brand. They are well-versed in the technical and legal language necessary for the USPTO to approve the trademark. An incorrectly completed application is one of the most common reasons that trademark petitions are denied, and it's easy to get the legal jargon wrong if you lack the years of experience of a legal professional.
Not only will a lawyer do their best to make the strongest case for your brand, but they've also seen countless other petitions and know how to complete the application with the highest likelihood of success. Their experience and expertise can minimize the chances of denial, mistakes, and other risks. A skilled lawyer will generally thoroughly review your application before submitting it on your behalf.
3. Respond to Office Actions and Opposition
Even with a database search and an expertly completed application, you may receive an Office Action from the USPTO. An Office Action is essentially a denial that you can respond to in an attempt to overturn the rejection. This should not be done by laypeople, as the odds of overturning it are low unless you have an excellent grasp of trademark law.
Even if you submitted your trademark on your own and received an office action from the USPTO, it’s ideal to consult with a lawyer on the best course of action. You typically only have a limited timeframe to respond, and a lawyer can guide you through drafting a thorough response.
Additionally, your trademark could be challenged or opposed by a third party during the trademark process. In that case, you’ll need an experienced legal expert to help you go toe-to-toe with another business or brand claiming that your trademark isn’t valid.
4. Ensure Your Trademark Is Enforced and Maintained
Once you receive your registered trademark , the work isn’t over. You’ll still need to maintain and renew the trademark. This typically happens between the fifth & sixth years, the eighth & ninth years, and every subsequent decade after that. Overlooking trademark maintenance and failing to submit the proper documents to prove continued use could mean getting hit with additional fees, or losing your trademark altogether. A trademark attorney can keep up with renewals and help your brand comply with USPTO guidelines for maintenance.
Additionally, if you face trademark infringement and need to get the offending material taken down, your trademark lawyer can assist you in drafting a powerful cease & desist letter or even escalate the situation if the cease & desist isn't sufficient. Your trademark lawyer is your first line of defense for handling your infringed-upon brand, and can provide the best guidance and resources for dealing with trademark theft.
Protect Your Brand Today With Mika Mooney Law
Protect the brand you’ve worked so hard to build by contacting Mika Mooney Law. When you work with me to secure your brand, I’ll help save you time, money, and hassle by ensuring you have all the support you need—through every step of the application process and beyond.
Reach out today, and we’ll work together to assess your brand security needs and start the trademarking process right away so your business is protected for years to come. As a trademark lawyer, I’ve guided a wide range of women-owned businesses at every stage of their brand protection journey—let’s chat about how I can support you next!
DISCLAIMER: This article is for legal education purposes only. It is not intended as legal advice, and no attorney-client relationship has been formed. To the extent this post constitutes attorney advertisement, past results do not guarantee similar outcomes.
