Registering a Trademark in the US: Do I Hire an Attorney or Do it Myself?
Registering a trademark in the United States seems pretty simple with applications and documents filed electronically. The workflow for the registration process is also clearly stated on the United States Patent and Trademark Office (USPTO) website. You need to file your initial application using the Trademark Electronic Application System (TEAS), then follow the procedures indicated.
However, fulfilling all the requirements in every step of the registration process can be daunting. Some may already find choosing the right filing basis at the onset confusing. Then, the details of preparing documentation and responding to office action take much time and effort. The time that could be better spent handling core business operations. So most people opt to hire an attorney to process the trademark registration.
If you’re still unsure whether to hire an attorney or register your trademark by yourself, here’s the lowdown on the advantages and disadvantages of both options. Hopefully, this brief guide can help you make an informed decision on how to process your trademark registration.
Who Are Required to Have an Attorney When Registering a Trademark in the US?
Trademark applicants or registrants who reside in the United States or any of its territories can process their trademark registration independently. They can file the application using TEAS Plus or TEAS Standard, then submit all the required documents electronically in the TEAS.
For foreign entities or foreign-domiciled applicants and registrants, the USPTO requires the legal assistance of an attorney. The lawyer representing them must be licensed to practice in the United States.
How Long Does It Take to Register a Trademark in the United States?
Filing a trademark registration application using the TEAS takes only a few minutes. But the time needed to prepare all the documentation required takes much longer, especially if you are not familiar with the registration process. Then, there’s also the processing time after you file your application.
To give you an idea of the length of time it takes to register a trademark, let’s go through a typical timeline. After you file an application through the TEAS, it takes the USPTO about three months to review your application. Then, it takes another month to approve the trademark and publish it for opposition. The USPTO keeps it open for opposition for three months. If there are any issues, you must respond or submit additional documentation. If all is in order and there are no oppositions after three months from publication, the USPTO will finally register your trademark.
This timeline does not cover all scenarios though. It will be different for every trademark registration application. If all your documents are in order and there are no hitches, the approval process can take as short as 12 to 18 months. But if there are missing requirements, additional documentation, or any other concerns requiring office action, the entire process can take over two years. If you do not promptly respond to actions such as filing extension requests, the trademark registration process can take longer. Also, your trademark application may be refused for legal reasons. So there’s no guarantee your trademark will be approved for registration.
Indeed, many factors affect the length of time it takes to process a trademark registration in the United States. Having someone familiar with the process can help shorten the timeline and increase the chances of getting approved.
What Are the Advantages of Hiring an Attorney to Register a Trademark in the US?
If you’re a foreign entity, you must hire a US-licensed attorney to register your trademark in the United States. However, even if you are a resident of the United States and its territories, hiring an attorney specializing in US trademark laws is still advisable. Here are some of the many advantages they bring:
1. Complete documentation
Trademark registration involves tons of paperwork. Along with the application form, you’ll need to submit proof of identity, a business certificate, and a copy of your trademark design. Then, additional documentation may be required if there are issues regarding your trademark or if other trademark owners oppose it. Having an attorney who knows exactly what documents need to be prepared and when to submit them helps make the registration process flow more smoothly.
2. Thorough trademark search
Anyone can conduct a trademark search using the Trademark Electronic Search System (TESS). The TESS database contains all registered trademarks and those that have previously been applied for. You can do a basic search using words or specific marks to see if your trademark infringes upon existing ones. However, TESS cannot do a thorough check. This is where an attorney comes useful. Trademark lawyers can check for trademarks beyond TESS and can carefully examine your own trademark to see if it meets all the requirements for registration.
3. Prompt response to USPTO
Registering a trademark in the United States isn’t always a file and wait process. There are instances when the USPTO raises concerns over applications. When this happens, they will send a notice for action to which you must respond before a set deadline. An attorney can ensure a prompt response to any legal correspondence from the USPTO.
4. Sound legal advice and representation
A lawyer who has expertise in trademark laws can provide you with crucial advice in all matters regarding your trademark application. If there are issues with your registration, they can also represent you at the USPTO Trademark Trial and Appeal Board. Once the registration is approved, they also ensure that your trademark rights are maintained and enforced.
5. Safe and secure transactions
Trademark attorneys protect you from fraudulent solicitations. While plenty of trademark filing companies offer legitimate services, there are also many unscrupulous ones. With US-licensed lawyers, you are assured of safe and secure transactions regarding registering your trademark.
Are There Downsides to Hiring an Attorney for US Trademark Registration?
The primary reason why people are wary of hiring attorneys is the cost of legal representation. Especially for new businesses, the cost of an attorney’s services can be perceived as an additional expense that can be avoided. Remember that preparing documents and responding to USPTO actions take valuable time and effort. Time can keep you from performing more important business activities impacting your revenue. If you think about it this way, hiring an attorney saves you money in the long run.
What Are the Advantages of Registering a Trademark by Yourself?
If you are a resident of the United States or its territories, you can file a trademark registration application by yourself. DIY registration will save you the cost of legal representation by a US-licensed lawyer, ranging from a few hundred dollars to a couple of thousand bucks. You can also easily monitor your application by logging in to your MyUSPTO account. Aside from saving a bit of money, DIY registration hasn’t many advantages.
Are There Downsides to DIY US Trademark Registration?
There’s a good reason why most people opt to hire a trademark attorney. Doing it yourself has more disadvantages than advantages. For one, the majority of DIY applications get rejected for various reasons that could have been easily avoided if one had sound legal advice. The forms may be easily accessible and submitted online, but filling them out with the right information can be confusing, especially for new business owners. Another challenge to DIY registration is responding to USPTO office actions on time. If you cannot send a response or comply with the additional documentary requirements before the deadline, your application will be automatically terminated.
Work Only with Reliable and Trusted Attorneys
To improve the chances of registering your trademark, leave the groundwork to reliable and trusted attorneys. Look for a US-licensed attorney who specializes in trademark law and can represent you well in any transactions or proceedings at the USPTO.