What a Private Attorney Could Do to Help Avoid Potential Pitfalls
Filing a trademark application at the USPTO starts a legal proceeding. Most applicants hire an attorney who specializes in trademark matters to represent them in the application process and provide legal advice. While a USPTO trademark examining attorney will try to help you through the process even if you do not hire a lawyer, no USPTO attorney may give you legal advice.
A private trademark attorney can help you before, during, and after the trademark application process, including policing and enforcing any trademark registration that may issue. While you are not required to have an attorney, 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 before you file your application. Comprehensive searches are important because other trademark owners may have protected legal rights in trademarks similar to yours that are not federally registered. Therefore, those trademarks will not appear in the USPTO's Trademark Electronic Search System (TESS) database but could still ultimately prevent your use of your mark. In addition, trademark lawyers can help you during the application process with several things that could seriously impact your trademark rights, such as determining the best way to describe your goods and services and preparing responses to refusals to register that an examining attorney may issue. Finally, a private attorney can also assist in the policing and enforcement of your trademark rights. The USPTO only registers trademarks. You as the trademark owner are responsible for any enforcement.
How to Find a Trademark Attorney
To locate an attorney, consult your local telephone listings or contact the attorney referral service of a state bar or local bar association (see American Bar Association's Consumers' Guide to Legal Help). The USPTO cannot provide you with legal advice or help you select an attorney.
Attorneys generally charge a fee for their services, but some attorneys and bar associations may offer free or greatly reduced services to financially under-resourced individuals and small businesses. The USPTO has interacted with intellectual property ("IP") law associations to encourage the establishment of such pro bono programs, including the American Bar Association. The International Trademark Association also has a committee dedicated to raising awareness about IP pro bono issues globally. The USPTO's reference of these resources is for informational purposes only.
For more information about receiving assistance with your application, please watch the animated video titled “Basic Facts: How Do I Get Help My Application?” part of the Basic Facts About Trademarks video series.