How to register a trademark without an attorney

Not everyone is required to have an attorney represent them before the USPTO. However, all trademark applicants and registrants must provide and keep current their domicile address in trademark filings. This lets us determine the identity of the applicant or registrant and whether or not they must be represented by a U.S.-licensed attorney to file documents with us in trademark matters.

If you are a foreign-domiciled trademark applicant or registrant, you must have a U.S.-licensed attorney represent you. If you’re domiciled in the United States, you’re not required to have an attorney. To determine whether you’re required to have a U.S.-licensed attorney, you must provide and keep current your domicile address in trademark filings.

Even if you’re not required to hire a U.S.-licensed attorney, consider whether or not you should. Be ready to act as your own attorney if you don’t hire one.

Benefits of hiring an attorney include:

  • Providing you crucial legal advice about your trademark.
  • Conducting your trademark  clearance search  before you file an application.
  • Preparing your application accurately.
  • Responding to legal correspondence from the USPTO.
  • Enforcing and maintaining your trademark rights.
  • Representing you at the USPTO’s Trademark Trial and Appeal Board.
  • Shielding you from fraudulent solicitations.

If you hire an attorney, be aware that your application fees will remain the same, but your overall costs of filing a trademark application will be higher because you’ll also have the cost of your attorney’s services.

However, in the long run, hiring an attorney may save you money because an attorney will know how to best advise you on your trademark’s registrability, prepare your application, and respond to the USPTO on various issues that might arise throughout the process. See more specifics about hiring a U.S.-licensed attorney, including access to free and reduced-price legal services.

There are numerous companies that state they will help you file your application. Some of these companies may offer legitimate services; others do not. Be aware that trademark filing companies are not the same as law firms. If you use one of these companies, you will pay their separate services fees as well as our fees. We don’t endorse the use of these filing companies.  Learn how to recognize private filing companies and which ones may mislead you.

Do you need an attorney to federally register a trademark in the U.S.?

While you don’t need to hire a trademark attorney, we believe that a trained attorney provides invaluable advice and guidance when navigating the trademark registration process.

On this page, we provide guidance on the following topics:

Do You Need to Hire an Attorney to Federally Register a Trademark?

No. You do not need an attorney to file an application for registration of a trademark with the United States Patent and Trademark Office (USPTO). That being said, you really ought to hire an attorney if you can afford one.

Why Hire an Attorney if One is Not Needed?

The first reason is that we attorneys tend to be really good at this law stuff. Consider the reason why you are reading this webpage. That reason is most likely that you don’t know enough about trademarks, about filing trademark applications, or about dealing with the USPTO’s application process to feel comfortable dealing with these things yourself. We not only help you understand the issues involved, but will also deal with these things so you don’t have to.

The process of filing the trademark registration application is fairly straightforward and can be done at the USPTO’s TEAS website. But you will quickly find that the on-line application has a variety of potential complications and pitfalls that are perhaps best dealt with by having a trademark attorney deal with them. From knowing which form is ideal for your circumstances, to drafting a proper goods and/or services description, to helping you determine if the application should be filed in one or multiple international classes–we will help you through the details of the application and help ensure the completeness of your filing. If your application is reviewed and rejected by the USPTO for any reason, we will be able to draft an appropriate response on your behalf, and (if necessary) appeal a rejection of your trademark application to the Trademark Trial and Appeal board.

We will also track and docket all the relevant dates that the USPTO imposes on the registration process that may affect both the status of your application for registration as well as those deadlines that are relevant to the mark once it registers. For example, five years after your mark is registered you, will normally file a Section 8 and 15 Affidavit, and after ten years, you will need to file for trademark renewal (see our guidance on What are the Costs after your Trademark is Registered? for more info). We will remind you of these deadlines and can assist you in responding to these requirements. Thus, using a trademark attorney not only grants you peace of mind, but also helps to ensure that you are not subject to a premature loss of rights to the mark.

Perhaps most importantly, we can provide you with legal trademark advice when necessary. We can help you on the selection of trademark and how best to use your trademarks on your products and services. We can also help you enforce your trademarks in case another party begins to use your protected mark on similar goods and services.

A Video Explanation from the U.S. Trademark Office

The USPTO has created a brief (eleven-minute) video that explains the role of the trademark office and some of the assistance that can be provided by a trademark attorney. The video is embedded below, and can also be found on the USPTO’s own site.

The attorneys of Forsgren Fisher McCalmont DeMarea Tysver will help assist you in any manner that you want. We are happy to answer your most basic questions, to file and prosecute trademark applications on your behalf, and to deal with the bureaucracy of the USPTO so that you don’t have to. Forsgren Fisher McCalmont DeMarea Tysver is happy to help meet your trademark filing needs-–whatever they may be.

How to register a trademark without an attorney

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Let Forsgren Fisher McCalmont DeMarea Tysver help with your trademark issues. Contact me for a free initial consultation.

Guidance on Trademark Applications

These pages provide guidance on filing a federal trademark application with the United States Patent and Trademark office. The trademark filing overview page gives a general summary of the guidance available in this section.

What is a trademark and when do you have one?

What is a “Common Law” trademark?

If you have rights without registration, why register?

Video explanation from the US Trademark Office

What is the cost of a trademark application?

What is the cost of a trademark search?

What costs are specific to intent-to-use applications?

What are the costs after your trademark is registered?

When should trademark applications be filed in general?

What is an Intent-to-Use application?

What is an Actual Use application?

What is a trademark search?

What is the cost of a trademark search?

Should you conduct a search?

Do you need an attorney?–Nope.

Why you should hire an attorney anyway

Video explanation from the US Trademark Office

The importance of fully listing goods and services

An Example–selecting your goods and services

The Example Continued–implications of the selection

What is an Office Action?

Common Types of Rejections in an Office Action

Great guidance coming soon

When is a mark confusingly similar to another?

Analyzing whether the rejection is appropriate

Arguments to make in responding to the rejection

What is it mean that a mark is merely descriptive?

What if the mark really is not descriptive?

What is secondary meaning?

Using the Supplemental Register

How to register a trademark without an attorney

You have great ideas. When you need to protect them, call us.

A Minnesota and Kansas City law firm serving patent clients from across the country

Do you need an attorney to file a trademark? That is a question that many business owners on a budget may be asking when deciding whether or not to invest in a trademark attorney. The short answer is no, as you can file a trademark application using tools provided at the United States Patent and Trademark Office through their trademark service. The service is free to all filers.

Even though you can technically file for a trademark online without retaining an attorney, sometimes the procedures and format requirements can be difficult to file. You must file using the correct basis and description of the product or service. In the event your application contains errors, it could result in a delay or refusal. An attorney does not only file the application for you; they will assist you through the entire process from filing to approval.

Reasons to Contact a Lawyer Before Filing for a Trademark

There are many ways in which a lawyer can assist you with your trademark search:

  • They can conduct a trademark search to see if your trademark holds will pass the likelihood of confusion between your mark and other registered marks or marks that are currently pending registration. A lawyer can advise you on the risk of confusion.
  • Your lawyer can answer questions you have about the trademark registration process that may not be available on the USPTO website.
  • If you plan to file for foreign trademarks as well as trademarks in the U.S., they can assist you and advise you on foreign trademark law.
  • If your filing is refused, they can file a response on your behalf.
  • If you believe someone begins using your trademark without your permission, they can help you enforce your rights. As a trademark owner, it is your responsibility to protect your trademark as well as make sure the proper steps are taken for you to keep your mark active.
  • In the event you are accused of trademark infringement, your lawyer can help you respond and assist you with any legal action that you may face.

How Do You Secure a U.S. Trademark if Your Company is Based in Another Country?

If your business is based in another country, you may still want to try to register your trademark in the United States. Since trademark law is specific to each country, you will need to obtain a U.S. attorney who can help you navigate the process. You can file for a U.S. trademark without an attorney, though the process can be more difficult. If your trademark is rejected, the only ones who can respond are the trademark owner and a U.S.-based attorney.

Retaining the services of a qualified U.S. attorney is important in such situations as:

  • You receive a rejection for your trademark application based on the descriptiveness.
  • The description process is lengthy and has been rejected as vague.
  • You desire to file multiple trademarks in the United States and need a strategy.
  • You are not as comfortable writing in English.

How Can an Attorney Assist You With Your Trademark Registration?

There are many ways in which an attorney can assist you during the trademark registration process. They can:

  • Help you choose the right trademark. They will have experience knowing which types of trademarks and elements that the USPTO is likely to approve. Your attorney will review your mark for eligibility before filing the application, lowering your risk for rejection.
  • Conduct a trademark search to make sure yours is original and meets the requirements for likelihood of confusion. Though you can perform this search yourself, it can be a long process, and your attorney can perform more in-depth searches.
  • Help you properly complete the form. If your form is not properly filled out, it is likely to be rejected.
  • They can create a description that will be considered acceptable. Precise descriptions are important to the application process. Many applications will be rejected due to incomplete or vague descriptions making this a vital section to get right.
  • They can help you communicate with the USPTO. The USPTO may respond with a query or a refusal. In both instances, your attorney can craft a response that may be the difference between approval and rejection.

If you need help determining whether or not you need an attorney to file a trademark, you can post your legal need on UpCounsel’s marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.

A trademark attorney is someone who has is an expert in matters relating to trademark laws, designs and practices. He provides legal advice and assistance in fields relating to trademark laws and other laws relating to IPR (Intellectual Property Rights). He is a person with a vast knowledge of trademark laws and fights cases with his expertise regarding the topic.

A trademark attorney must be registered to practice before the IPAB (Intellectual Property Appellate Board). A Trademark attorney assists a trademark holder or a potential trademark holder in every way possible by guidance and legal support. He also makes sure that the trademark he is applying for does not infringe with any other trademark holder.

The question whether an attorney is required to file for a trademark registration is debatable but if measured on a weighing scale, the side to appoint an attorney becomes heavier. Yes, it is possible for a common man filing a trademark to not appoint an attorney, especially when all the laws and rules are properly laid down for a trademark to be filed. Any layman who wants to register a trademark can apply himself. But when the practical applicability is considered, appointing an attorney will ease the process to register a trademark. Certain procedures are to be followed to apply for a trademark.

  • An application is filed.
  • The all India record is searched thoroughly to identify any similar registered trademark.
  • The Trademark Office takes about 2 years to consider or grant the applied trademark and post in in the Trademark Journal.
  • In case of any opposition from a party claiming a similar trademark, it has to be settled by fighting a case and proving the originality of the filed trademark.
  • Only if the case is won, is the trademark granted by the Office/Court.

Applying for a trademark is a big and vast process. It generally is a tiresome process and appointing an attorney suits the purpose.

Why an attorney should be appointed ?

  • If a situation arises when an objection is raised against a filed trademark, an attorney is the only qualified person to argue the matter and settle it so that the registration is granted making the appointing of an attorney important.
  • Secondly, having an attorney appointed always has a good result in future. In the unforeseen circumstances of the death of the person who filed for the trademark, the attorney can act as a legal representative of the dead with the consent of the deceased person’s legal heir. There are jobs like renewing the Trademark every 10 years and such which if left to the attorney will save more time.
  • He will take the burden off the shoulders of his client and the client does not have to do every job personally.

The work of filing a trademark can be either delegated to a Trademark attorney or a trademark agent. A trademark agent is not a lawyer unlike a trademark attorney. He can only practice in trademark laws and that too after fulfilling various conditions of the IPAB whereas a trademark attorney has more knowledge and is a qualified lawyer and practices law outside the IPAB Trademark Office as well and so have an upper edge over the agents.Any person who himself is an attorney and is filing for a trademark can do away with appointing a trademark attorney because he might know his set of laws clearly to be able to file a trademark. He can afford to do away with an attorney. But it is recommended that an expert trademark attorney is appointed who gives legally sound opinions to the layman who has no knowledge about law. Apart from this, a trademark attorney can also be instrumental in giving proper legal knowledge after consultation.

By:
Nikhil Nair
Vivekananda Institute of Professional Studies,
GGSIP University, New Delhi

Applying to federally register your brand’s trademark can be a long, multi-step process, but rest assured, you can successfully do it on your own!

Though many business owners often hire an attorney to help them during the United States Patent and Trademark Office (USPTO) application process, there are reasons you might register your trademark without the counsel of a Trademark Attorney.

This guide below will inform you on why you might forego hiring an attorney.

1. Registering Doesn’t Require Hiring an Trademark Attorney

In pretty much all law cases and proceedings, there is no mandate requirement that you must seek legal counsel, it’s merely encouraged.

You’re more than welcome to engage in all legal action by yourself and on your own account.

The formal term for representing yourself is “Pro Se.”

By choosing to represent yourself, it means that you intend to learn and find your way through the legal process of registering a federal trademark.

2. USPTO’s Registration Application is Online

The USPTO makes it somewhat easy to register your trademark through a publicly accessible online system: The Trademark Electronic Application System (TEAS).

Fortunately, the USPTO’s website explains each step of the registration process and also features a FAQ (Frequently Asked Questions) section that answers questions you may have.

Filing your registration online provides you a time efficient opportunity to complete the process.

Further, you can complete the application process online in a matter of hours.

On the website, the USPTO gives you valuable information and video tutorials on the rules and regulations of trademarks.

It also details instructions on the registration process, fee payments, and more.

3. Opportunity to Learn The Basics

Part of going through the legal process is learning all of the moving parts that come with it.

Though a lot of the trademark registration process is complex and has various steps, there is always room to gain valuable knowledge.

Specifically to the Federal Trademark registration process, there are an array of guidelines that one should be aware of before proceeding.

Learning the difference between Distinctive and Descriptive Trademarks, Current Use and Intent to Use, and the meaning of trademark infringement are all topics you should try to understand.

With that said, the USPTO’s website and other resources offer a great opportunity to immerse yourself in such information.

4. Doing it Yourself Is Substantially Cost Effective

Registering online and on your own is by far the cheapest option there is.

By hiring an attorney, your total costs may go up.

Below is a list of the USPTO’s types of registration forms:

  • TEAS Plus Form is $250 per class of goods and services
  • TEAS Standard Form is $350 per class of goods and services

Lastly, the website details all circumstances that require other additional fees including, extensions, maintenance, and renewal.

With that said, it’s important to be aware that simply registering is costly in itself.

One benefit to hiring an attorney is that it might save you money in the long run.

If you attempt on your own and are unsuccessful you may end up paying the filing fees a second time.

5. The Fortunes of Trial and Error

When enduring this process, it’s understandable that you may make some mistakes along the way.

Though that can be reasonably frustrating, there is a bright side to oversights.

If an error occurs, an opportunity to have a second chance at registering lies ahead.

When a misstep takes place, you receive an Office Action.

An Office Action is when the USPTO sends you a notice about problems with your application.

Fortunately, you have six months to return a response letter with corrections that satisfy all parts necessary for your trademark to register properly.

Because Office Actions are potentially complex, even if you been successful registering your trademark up to this point, you might consider hiring an attorney to help you resolve any office action.

Conclusion

After reviewing this guide, you should be aware of some advantages of registering for a trademark without an attorney.

Even if you do decide to hire an attorney, understanding the thought process and effort behind trademark registration should improve communication between you and your legal representative.