A U.S.-licensed attorney who specializes in trademark law can provide valuable legal advice about many important issues and help you before, during, and after the trademark application process.
Before you file your application with the USPTO, an attorney may save you from future costly legal problems by conducting a comprehensive search of federal registrations, state registrations, and “common law” unregistered trademarks to determine if your chosen mark is available for use and if it is eligible for federal registration. Comprehensive searches are important because other trademark owners may have protected legal rights in trademarks similar to your chosen mark, even though they are not federally registered. Such unregistered trademarks will not appear in the USPTO’s Trademark Electronic Search System (TESS) database, but could still ultimately prevent you from using your chosen mark even if the USPTO registers your mark.
When you file your application, an attorney can help you navigate the registration process to provide optimal protection of your trademark rights. For example, an attorney can determine the appropriate filing basis for your application, accurately identify and classify your goods and services, select an appropriate specimen that shows your mark as used in commerce, and prepare responses to any refusals to register your mark that a USPTO examining attorney may issue. Although a USPTO examining attorney can provide information about the federal registration process, USPTO employees cannot give you legal advice.
An attorney also can help you understand the scope of your trademarks rights and advise you on the best way to police and enforce those rights. For instance, if other trademark owners challenge your application or registration, or allege that you are infringing on their marks, an attorney can advise you on what to do and defend your case.