The Benefits of Using a Trademark Counsel for Trademark Registration

The Benefits of Using a Trademark Counsel for Trademark Registration

In any business or trade, the legality of its existence and operation is something to be given serious consideration. Trademark registration exists for that very purpose. For most startups and even for companies with years of experience in the business, the registration of trademarks for their brands and products can be a daunting task. In legal terms, when one files and registers a trademark with the relevant authority, the process is called trademark prosecution. In the U.S, this authority is the United States Patent and Trademark Office (USPTO). In order to make the process easy for oneself and to avoid the accidental infringement of the legal rights of other entities, the most sensible step would be to hire a professional i.e. a trademark counsel.

At What Stage of the Process Should I Hire a Counsel?

A trademark counsel should ideally be hired even before one begins the application filing. The counsel would perform a trademark clearance search to ensure that the trademark about to be registered is unique and does not resemble an existing one. The USPTO itself advises seeking the assistance of a counsel. He or she can ascertain whether or not the trademark is available, and can reduce the possibility of costly legal repercussions.

Which Kind of Application Should I File to Get My Trademark Registered?

There are multiple types of trademark applications which differ in their requirements and fee. Your counsel will analyze your business, and once he or she understands the nature of your company and its objectives and goals, the counsel can help you decide which one of these types is the most suitable for your company.

The Ownership of a Trademark

Naming the proper trademark owner is an important decision that needs to be made after giving serious thought to its future implications. It is a fundamental part of the filing process and, if done carelessly, can lead to a plethora of problems. To learn why the name of the owner is so critical, see our webpages “Who Should Be the Owner of a Trademark?” and “The Importance of Naming the Proper trademark Owner”. One might benefit from the assistance of a trademark counsel in this step of the registration procedure.

Performing a Thorough Clearance Search

Something applicants often overlook is the fact that a clearance search must be carried out not only in the federal and state databases but also in “common law” to ensure compliance with the U.S law. It refers to those marks that are not registered on the federal or state level. These pose a problem for applicants as common law trademarks will not be searched by the examining attorneys; they are neither obligated nor equipped to do so. If a trademark is successfully registered without a proper clearance search of such common law trademarks, the owner of the former might unintentionally infringe on the rights of others. This situation is most frequently followed by a lawsuit that can ruin the reputation and public image of a company. Trademark counsels offer invaluable services in this regard by conducting a thorough search in the aforementioned databases. He or she can guide you through the clearance search and make sure that you and your company do not burn through your precious resources in fighting legal battles in the future.

Settling on an Appropriate Definition of Your Goods and Services

How you define your product is crucial to the successful registration of your trademark. Its definition should be such that it helps the company achieve certain aims of financial and legal nature. You can define your goods and services narrowly or broadly; however, the USPTO reserves the right to reject the application if it finds the definition excessively broad, imprecise, or vague. Other trademark owners might also see it as an opportunity to oppose your trademark registration in such cases. On the other hand, if goods and services are defined too narrowly, it might cost a heavy price in the form of losing certain legal rights the company might have otherwise enjoyed. This is a serious disadvantage in a competitive market. An applicant, unaware of these potential issues, might end up wasting precious time and resources in resolving them. A trademark counsel can save you the trouble of coming up with an apt definition all by yourself. He or she can help you settle on a legally suitable definition of your business.

Following the Guidelines of the USPTO

The USPTO has strict guidelines regarding the requirements of a trademark. If your mark falls short of even any one of the requirements, it will most likely not be registered. An application can be rejected for a number of reasons the most common of which are as follows.

1. The proposed trademark resembles another mark so closely that they can be confused with each other. The other mark might be in the registration process, in use, or in a pending application.

2.  The mark is descriptive of the products, geographically descriptive, vague, and generic. Marks that are found to be ornamental (acting as decoration on the goods and not easily recognized as trademarks) or are surnames are not allowed.

3. Marks that are intentionally misleading and falsely suggest an association with certain entities, to exploit people, are not acceptable.

A trademark counsel can help you decide on a trademark that follows these guidelines and minimize the chances of the rejection of your application.

The Importance of Filing Basis

The filing basis you select in your application also needs a bit of attention. You have a few options from which you can select one or more bases. An incorrect selection of filing basis can make your business prone to an attack from a competitor. The importance of this part of the application is further elaborated on our webpage entitled “Determining Which Filing Basis Is Appropriate for Your U.S Trademark Application”.

Post-registration Counsel

The services of a trademark counsel can prove to be of value even after registration. Some of these services are as follows.

1. In case your mark is challenged, the counsel can argue in your favor at the Trademark Trial and Appeal Board.

2. Since the responsibility of policing the mark and protecting it from infringement lies with its owner, you will need the assistance of your counsel to learn the extent of your legal rights. He or she can also map out the best course of action to ensure the enforcement of your trademark rights.

3. After registration, there are some post-registration papers that need to be filed at the USTPO. Your counsel can help you in filing these too.

If you have any queries about your trademark, the trademark application, or other things relevant to the registration process, feel free to contact us for a courtesy consultation.