Why Hire a Trademark Attorney to File a Trademark?

By Carmen Cornejo

You have probably seen internet companies that file Trademarks for cheap. They seem professional but to get to the point, there is a Mexican saying that goes “Lo barato sale caro”- which translated means “what comes cheap can really cost you a lot of money”.

A lot of money, plus the opportunity to advance your business.

These internet companies lack the professionalized attention since their phone and chat features are taken care by telemarketers. Only big fat accounts get a glimpse of attorney service in these settings.

An attorney specialized in trademarks can do an in-depth assessment of your trademark needs, including the viability of your request.  There are names or expressions that cannot be trademarked.

A good Trademark Attorney will be upfront and direct.

He or she will do an extensive research to see if other businesses are not using the trademark, and will tell you the rate of success for your trademark to go through and/or different alternatives in case your trademark does not proceed or has a low chance of success.

The United States Patent and Trademark Office recommends hiring a Trademark Attorney to avoid potential pitfalls. It is important to know that trademarks filed by Trademark Attorneys are 50% more likely to be successful and that 83% of all the Trademark applications receive rejections. If you incorrectly file an application, you may lose your government fees.

If you submit an application that gets rejected via an office action or file an application that gets noticed by the actual trademark owner, you can be sued for trademark infringement or the owner may issue you a cease and desist communication.

The trademark office states that “Individuals who are not attorneys are not recognized to practice before the office in trademark matters.”

If your trademark gets rejected, an experienced trademark attorney can present legal arguments against the examiner’s opinion, but if an unqualified individual responds or you respond on your own to the examiner, you run a high risk to weakening your mark.

In case your initial trademark is rejected, a good lawyer can seek alternatives for your case.

The issue gets more complicated if you are planning to file trademark applications in other countries, were the law, commerce and language play important roles in the level of expertise necessary to deal with international trademarks.

Please remember that the sole fact of owning a company name via state registration, domain name or URL does not give you any claim to a trademark and you are not protected at all. Domain names, business registration, and trademarks belong to different universes that an expert Trademark Attorney can help you navigate successfully.

Even if you filed yourself a trademark and got rejected, you can still save it by contacting a Trademark Attorney to make the arguments to the examiner. It may not be too late for success!

Please remember: all blog commentary is for informational purposes and it is not intended as legal advice.

Marcos E. Garciaacosta, Esq. has an excellent track record of trademark application success, plus has a deep understanding of the business and technology world. You can read his resume here. In addition to his professional background, he is a multilingual professional who has been working effectively with trademark agencies across the globe.

For a personalized consultation, you can schedule an appointment at (480) 324-6378.

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