Small businesses typically attempt to file their trademarks on their own in order to save money. The problem is that this too often comes at the cost of something even more valuable – time.
Without knowing what you’re getting into or how the system works, the process of filing for trademark registration with the USPTO can lead to a lot of setbacks, rejections, and take far longer than you would have initially thought.
Ultimately, this can lead to spending even more money in order to re-file.
These pitfalls can be avoided by hiring a US trademark attorney who knows the filing process inside and out.
Typical Reasons Trademarks Are Rejected
Filing a mark that conflicts with an existing mark – This is typically the result of failing to perform an in-depth and comprehensive trademark search. There are hundreds of thousands US trademarks on record and the potential for yours to be “confusingly similar” to one of them is high.
Conducting a comprehensive trademark search is difficult and time-consuming if you don’t have the resources to do so. US trademark attorneys, on the other hand, can do this on your behalf so that when you do file, the chances of your mark being rejected are much lower.
Filing a “merely descriptive” or “deceptively misdescriptive” mark – As the names imply, these are marks that either simply state what your product/service is (Custom Clamps, for instance) or marks that describe what your product/service is not (Authentic Fur Coats for example, even though the coats are made of synthetic material).
Filing your mark too late – Trademarks are source identifiers, therefore no two parties can have the same mark for the same products/services.
People too often wait until months after the launch of their business to file, only to discover that another party already has the same or similar mark filed. Others have the perfect mark yet have not officially launched their business and fear that someone else will register something similar.
US trademark attorneys can help you avoid this pitfall by filing for “intent-to-use”, effectively reserving your mark even though it hasn’t officially been trademarked yet.
Improper filing – There are many ways you can file a trademark incorrectly, which is going to lead to more time and more frustration after you receive a rejection letter.
Benefits Of Hiring A US Trademark Attorney
Beyond avoiding all of the pitfalls listed above, there are other benefits of hiring a US trademark attorney both for filing your mark and for protecting it after it is accepted.
The USPTO won’t enforce your trademark themselves – that’s up to you. If someone is infringing on your mark, an attorney can file the proper cease and desist order and, if necessary, follow it up with legal action.
Also, if you are a non-US citizen looking to file your mark with the USPTO, you are now required to have a US trademark attorney represent you. This law has been in place since 2019 so as to ensure the integrity of USPTO trademarks.