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  • Writer's pictureMichael W. Schroeder

All You Need To Know About Hiring A Licensed USPTO Trademark Lawyer

Updated: Jan 21, 2021

Must I absolutely hire a US-licensed trademark attorney who can represent me at the USPTO?

Yes and no! It depends on your domicile location. You will need to hire a US-licensed trademark attorney who can represent you at the USPTO if you are a trademark applicant, party, or registrant to Trademark Trial and Appeal Board Proceedings with a foreign domicile. That means any non-US citizen or any corporation organized and existing in another country, must be represented by a US-licensed trademark attorney in order for their application to be considered by the USPTO. On the flip side, if you are a trademark applicant, party, or registrant with a US domicile or domiciled in one of the country’s territories, it is not mandatory to hire a US-licensed trademark attorney. That said, we strongly encourage that you still avail yourself of the services of an attorney with expertise in trademark law so that you have support throughout the registration process, minimizing complications and costs.

What Can A USPTO Trademark Lawyer Do For Me?

1. An attorney can offer indispensable legal advice.

A US-licensed attorney specialized in trademark law can offer important advice about the relevant legal issues, including:

  • Assessing if the trademark you have chosen can be protected legally;

  • Assessing your trademark application’s filing basis;

  • Preparing, as well as filing, your complete trademark application with the USPTO and ensuring that the application accurately identifies all your goods and services;

  • Choosing the right specimen that demonstrates precisely how your trademark is/will be used in the marketplace;

  • Responding to refusals and questions regarding the registration of your trademark from a USPTO trademark examining attorney;

  • Defending you against challenges that are brought against your trademark by other parties;

  • Helping you understand the complete scope of your trademark rights as well as how you can enforce them adequately;

  • Helping you maintain your registration by preparing and filing all the documents with the USPTO.

2. An attorney conducts trademark clearance searches.

It is important to note here that if another party registers a trademark similar to yours with the USPTO prior to your registration, they can block your trademark registration. Furthermore, even if similar trademarks are not registered federally, they could prevent you from registering and/or using your trademark. This is yet another area where the services of a USPTO trademark lawyer can prove to be invaluable. An attorney can help you understand if your trademark can be registered or used and limit the possibility of you having to deal with expensive legal problems. Attorneys conduct a thorough clearance search to look for potentially conflicting trademarks and then offer a legal opinion. This comprehensive search comprises scouring the following sources to look for trademarks that could conflict with yours:

  • The database of USPTO consisting of federally registered trademarks

  • Sources of common law rights unregistered trademarks

  • Databases of the US state trademark registration

Attorneys conduct this search prior to filing your application.

3. An attorney can help you maintain and enforce your trademark rights.

If you own a trademark, you are legally responsible for protecting and monitoring it from infringement by someone else. Attorneys can help in this regard by explaining the legal scope of your rights and advise you on how to enforce and maintain those trademark rights in the best possible manner. An attorney can advise you of concrete steps you should take if another party is infringing or using your trademark. Once the registration is complete, attorneys can also assist in ensuring that all the necessary registration maintenance documents are accurately and timely filed so that you can maintain your registration until the time you use your trademark.

4. An attorney can represent you at the Trademark Trial and Appeal Board of the USPTO.

If you disagree with the final refusal of the USTPO’s Examining Attorney regarding the registration of your trademark, it is possible for you to file an appeal with the Trademark Trial and Appeal Board (“TTAB”). A party can also file a cancelation or opposition proceeding with the TTAB if they believe that they will be harmed by your existing registered trademark or the registration of your trademark application due to a potential conflict with their trademark. Likewise, you can also challenge the trademark registration or application of someone else at the TTAB by filing a cancelation or opposition proceeding. These are trial proceedings quite similar to litigation that takes place in federal courts. Opposition and cancelation proceedings, as well as appeals, have strict deadlines and specific procedures. Hiring a US-licensed attorney experienced in trademark law can help you navigate the complex proceedings, settle the case (if appropriate) and represent you with the best defense.

Why Should The Attorney I Hire Be Licensed To Practice Law In The United States?

According to the existing rules and regulations, you can only hire an attorney who is an active member of the bar of any US territory or state with a good standing. He/she should be able to represent you in trademark registration, application, or TTAB proceedings at the USPTO. Non-attorneys or non-US-licensed attorneys do not meet the criteria mentioned above and hence, cannot represent you at the USPTO. Moreover, they might also provide you with inaccurate legal advice and information regarding your trademark rights. This could potentially jeopardize the legal validity of your registration or application, in addition to extending the time taken for your registration or application-related submission. It can even cause your application to be abandoned, canceled, or rejected.

Get In Touch With One Of Our Expert USPTO Trademark Lawyers

The USPTO regulations and the US trademark law must be followed as these norms govern the process of trademark registration before the USPTO as well as the proceedings before the TTAB. These rules also govern the conduct of attorneys practicing before the USPTO. We, at Trademark.Legal, take trademark law very seriously. We treat each case as unique as it is and ensure that you receive accurate advice and assistance for your trademark applications and registrations. Our US-licensed trademark lawyers ensure the proper protection of your trademark rights, domestically and abroad. Call us at 323-553-1541 to book a consultation!

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