Trademark attorneys are not required, but add value increase chances of success and can save money in the long run.
Although there is not requirement that a trademark owner must hire a trademark attorney before filing a trademark application at the United States Patent and Trademark Office (USPTO), hiring a trademark lawyer can save time, money and increase the chances the application proceeds to registration.
Will the Application Succeed?
The best reason to hire a trademark attorney before filing a trademark application is because the odds the trademark will be registered are significantly raised. A 2013 study found that trademark applications filed by attorneys were published for opposition (the last step before registration) 82% of the time. Conversely, only 60% of pro se applications were published for opposition. In addition, these numbers are likely skewed more favorably toward pro se applicants since large corporations, such as McDonalds, have in-house trademark attorneys file their applications, yet were considered “pro se” applicants for the purpose of the study.
There are several reasons why applications filed by trademark lawyers are more successful than applications filed by pro se applicants. One common issue pro se applicants run into are “Office Actions” issued by the USPTO. USPTO Office Actions are issued if there is a procedural or substantive defect in the application. Trademark attorneys know what issues may come up during the application process and file the application in a way to avoid any Office Actions.
Office Actions delay the application process and can kill an application from proceeding
Pro se applicants biggest issue is not doing a trademark search or doing so improperly before filing an application and a “Likelihood of Confusion” Office Action is issued by the USPTO. For most pro se applicants, a Likelihood of Confusion issue is the death of an application and results in losing their USPTO application fees. Trademark attorneys, at least honest ones, always conduct trademark searches before filing to avoid Likelihood of Confusion Office Actions.
In addition to avoiding Office Actions to ensure successful applications, avoiding Office Actions also ensures the trademark application process will not be delayed. If everything goes right, the trademark application process can take between nine months and a year. If an Office Action is issued, the process can be delayed by six months, dragging out the already long application timeline.
Trademark attorneys are trained to avoid Office Actions so the process goes quickly and smoothly. For trademark owners seeking to get a trademark registration as soon as possible, trademark lawyers will help make that possible.
Trademark Application Costs
One of the strongest arguments to hire a trademark attorney, even though it will add to the overall cost of filing an application, is that trademark owners will be less likely to lose money (and time) invested in filing the application. USPTO fees for filing a trademark application are $225 or $275 depending how the application is filed. If the USPTO declares the application does not meet the standards for registration, the trademark owner loses any money and time invested in filing the application. The applicant may need to file a new application or abandon the project altogether. A trademark attorney can advise, up front, the likelihood of success and the trademark owner can decide whether to proceed or not with greater knowledge.
Although there is no requirement to hire a trademark attorney to file a trademark application, trademark applications filed by trademark lawyers are more likely to succeed, proceed to registration sooner and can save costs in the long run.
Are you planning on filing a trademark application with the USPTO but think you cannot afford an attorney? Contact us for a free trademark consultation and one of our attorneys will contact you today!