Trademark Lawyer

So, you've just come up with a product name and you've decided you want to trademark it. What should you do next? Is it really as easy as the website at the US Patent and Trademark Office says it is? Can I really do it without a trademark lawyer?

Even before consulting a trademark lawyer and once you come up with your product name, you must first find out whether or not that name is already being used for the type of product or service that you wish to use it for. You can do this by searching it through the US Patent and Trademark Office website to see if it's been registered or applied for. If it's already being used, you will likely have to consult a trademark lawyer to find out whether or not your use is different enough from the one already in use, to justify spending your money on trying to promote a name that is going to have to be changed later.

Let's say you can't find any other uses of the name out there. A trademark lawyer would know that if the name you have chosen is merely "descriptive" of the product, such as "Meaty Dog Food" for a dog food made of meat, it might be great for the consumer, but it is not necessarily a name that the US Patent and Trademark Office will accept as a trademark. A name that is "merely descriptive" is not going to pass muster, and will not be awarded a registration. There are other categories of name that are also not registrable, however they are a bit more complicated, and you really should consult a trademark lawyer regarding how best to proceed in those cases.

If your product or service name is not already being used, and is not descriptive, at that point you have a number of choices. You can begin using the name, spending the necessary money to promote it, print it on labels, etc., relying on your "common law" trademark rights, or, if you are only going to be using the name locally you could go after a state trademark, or proceed with national trademark registration through a trademark lawyer.

Your "common law" trademark rights are good, and you can hire a trademark lawyer to sue someone for infringement, but the court battle would be a lot more difficult than if you had a national registration. A state registration is pretty good, but a national trademark would definitely make your life easier. You can also register your mark internationally where a qualified trademark lawyer is highly recommended for international registrations.

If you decide to go for a national mark without the assistance of a trademark lawyer, you can go through the entire application online. In some cases you would receive a registration in approximately 18 months even though a trademark lawyer was not involved. Unfortunately, however, it is not always the case that your application for trademark registration goes through quite this easily. Oftentimes, you will receive what is called an "Office Action" from a Trademark Examiner asking you to clarify something, rewrite your statement of use, submit a different sample, or asking for more information. These are cases where you will most likely need the services of a qualified trademark lawyer to assist you.

Once you have submitted your application, a trademark lawyer can help you with many of the changes that might have to be made to achieve registration status. However, there are mine fields and pitfalls associated here as well. If you don’t seek assistance from a qualified trademark lawyer, it is entirely possible that you may have made a "fatal error" in the application, and it must all be started over again. If you don't find this out until your first office action, you may have wasted six months or more of time, and your entire filing fee, just to have to start over again with a trademark lawyer’s help.

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