Trademark Registration Process — Do it Yourself or Hire an Attorney?

Josh Gerben

5 min. read

Updated October 25, 2023

Approaching the trademark registration process can be daunting. Most small businesses, growing startups, and individual entrepreneurs do not have ready access to legal counsel. And hiring an intellectual property attorney may seem like a budget dealbreaker.

In many cases, the quick and easy registration process promised by DIY online service providers is incredibly appealing, especially for applicants just starting out in their business endeavors. While these potential clients may know the value of a trademark registration and wish to obtain one of their own, it is imperative for them to understand what role an attorney plays in successfully registering that trademark.

When is it time to apply for a trademark?

Ideally, the trademark registration process should begin as soon as you’ve narrowed down a selection of possible marks, including business or product names, logos, and slogans. Getting the process started early on will allow you to know about the availability of a particular mark before you buy labeling and signage or create a marketing strategy using the mark.

In addition, the date that you file your trademark application with the USPTO will become your priority date, and anyone looking to file a confusingly similar mark after that date will not be approved. Locking in this basic protection early on could protect your brand from copycats in the future.

Applying for a trademark — Do it yourself or hire an attorney?

The do-it-yourself approach

Entrepreneurs are often DIYers by nature. Many find that taking on the task to register their trademark without the assistance of an attorney is a budget-friendly decision. If you decide to tackle the process on your own, there are several online resources for managing the whole process. Everything from completing a comprehensive trademark search to selecting the correct international classes and responding to Office Actions.

You will also need to familiarize yourself with the United States Patent and Trademark Office (USPTO) website to learn how to conduct your search and select the correct application. In addition, once your application is filed, you will need to respond to Office Actions issued by the USPTO within the timeframe provided. Completing each step correctly is critical in obtaining approval for your trademark.

Hiring an attorney

Working with an attorney is an added cost that many entrepreneurs are hesitant to spend, especially before their venture is turning a profit. However, partnering with an experienced attorney allows new business owners to focus on other tasks like product development, employee training, and advertising, rather than the intricacies of trademark law and submitting applications. Your attorney will ensure the process runs smoothly and in a timely manner, providing the protection you need as soon as possible.

Why hiring an attorney for trademark registration is better for small businesses

Most small business owners don’t have time to familiarize themselves with the ins and outs of trademark law. When you engage an experienced trademark attorney, you will receive an entire suite of U.S. trademark registration services, including trademark searches, application filing, and communications with the USPTO.

Search and analysis

A trademark search examines the existing register and pending applications for marks that may potentially interfere with yours. While DIY websites may offer searches that claim to cover the same ground, they are typically at an additional cost and not nearly as comprehensive as those conducted by. a trademark attorney.

For example, at Gerben Perrott PLLC, our attorneys utilize state-of-the-art software that scours pre- existing registrations for marks that may be similar in sound, appearance, and function in fields related to yours. Additionally, the subsequent search results are reviewed with an attorney to ensure that the applicant understands any risk or potential changes needed when applying for their trademark.

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This guidance, which is notably absent from most DIY website processes, is often crucial to determining the chances of an application’s success.

Application intricacies

On the surface, a trademark application may seem like a straightforward document asking for the owner’s contact information and details regarding the goods or services offered under the mark. Upon closer inspection, however, the application form is filled with requests that require legal analysis. Determining which class is appropriate for your application, deciding what filing basis is appropriate for your product offerings, and understanding what a proper specimen looks like for each class designation.

These are all decisions best made with the assistance of a trademark attorney who understands the USPTO’s standards and requirements for how to file a trademark. When using DIY sites, the application must make these determinations alone. If an error is made, it can result in an application refusal, and can even conclude in the cancellation of your trademark.

Filings needed after the application

Just because your application has been submitted does not mean there are no further filings needed. Depending on the filing basis of the application, a statement of use filing may be necessary prior to your mark’s approval for registration. Other potential filings include extensions, Office action responses, and administrative updates, all of which are left to the discretion of the applicant when filing through DIY sites.

These filings can determine the fate of your application, and it is in your best interest to decide what filings may be needed for your trademark with the corresponding advice of an attorney to ensure no mistakes are made that may jeopardize your application.

Registration rejection

In the end, any money saved by using DIY websites will be a loss if the application is rejected and it is necessary to refile. Because of searches, application monitoring, filing facilitation, and other services that trademark attorneys are able to offer, the chances of an application’s success are significantly higher when filed by an attorney.

In fact, several university studies have found that an application is more likely to register when filed with an attorney’s assistance rather than by the applicant alone. Rather than risk your initial DIY site expenses and government filing fees, have an attorney make sure your application is thoroughly and correctly completed to give you the best chance of registration success.

Save money by working with an attorney

Ultimately, the upfront cost of a trademark lawyer should be considered an investment into your business. While the initial fees may be higher when using an attorney rather than a DIY online legal service, there is even more money saved in the long run by avoiding Office actions, litigation matters, and other potential hindrances.

Your trademark represents your business, branding, and reputation among consumers, making it easily the most valuable piece of intellectual property within your company. While the allure of saving a few dollars may be tempting, the potential pitfalls hiding in the application process make it worthwhile to hire an experienced lawyer to handle your trademark assets.

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Content Author: Josh Gerben

Josh Gerben

Josh Gerben is the founder of Gerben Law Firm, PLLC, a trademark law firm that has secured over 5,500 federal trademark registrations for clients Nationwide. Trademark lawyer Josh Gerben has been featured in a wide range of local and national news outlets, including NPR, The Washington Post, The Wall Street Journal, Fox News, and more.