What Do Trademark Attorneys Do?

Trademark Attorneys help business owners and entrepreneurs protect and enforce their trademark rights. This includes obtaining federal or international trademark registration, protecting trademarked assets by stopping others from using the trademark, and more.

A Little About Trademark Law – The Basics

A trademark is a form of intellectual property. Trademarks can include:

  • Designs
  • Logos
  • Signs
  • Expressions
  • A word, multiple words, or phrases
  • Colors (Think Tiffany Blue)
  • Sound (Think Apple Computer turning on)
  • The Packaging of a Product (Think Hershey’s Kiss)

Virtually anything identifying products and services from a specific source can be categorized as intellectual property and thus be trademarked.

So, who owns the trademark? It could be an individual, business, or legal entity of some kind. Trademark law protects these entities from having their intellectual property used by other businesses. It also protects against the creation and use of trademarks that are “confusingly similar” to their own.

What a Trademark Attorney Can Do for You

Trademark attorneys across the country are tasked with:

  • Providing legal advice regarding the adoption and selection of new trademarks
  • Advising on the best use of trademarks
  • Advising on matters of trademark infringement
  • Helping with the trademark registration process
  • Filing applications to register trademarks
  • Handling assignments, invalidations, oppositions, and revocations regarding trademarks
  • Carrying out trademark searches
  • Identifying problems that might come with your specific trademark registration.
  • Evaluating the strength of trademarks.
  • Advising on how to get the maximum amount of protection for your mark.
  • Responding to issues that arise following the filing of a trademark application.
  • Helping clients enforce their trademarks (this is not done by the USPTO).

Do I Need a Trademark Attorney?

You need to first evaluate your situation before you decide. There are common situations in which one would be wise to hire a trademark attorney. For instance:

  • You’ve completed a trademark search and decided on a trademark, but you’re unsure as to its authenticity, uniqueness, and likelihood of it being too similar to an existing mark that’s already registered.
  • You need answers to questions regarding trademark law or trademark registration that you couldn’t find at the USPTO website.
  • You expect to file trademarks both in the USA and abroad and you need the guidance of someone who understands and can work with foreign trademark laws.
  • You need advice on responding to a refusal to register or an Office action (a document written by a patent examiner).
  • Someone is using your trademark without permission. It is up to the owner of a trademark to enforce their trademarks, and to do so most effectively, you’ll need a trademark attorney to elucidate your rights and the best strategy on responding to a trademark infringement. If, ultimately, a lawsuit needs to be filed, it can be rendered toothless without a competent trademark attorney involved.
  • Someone has accused you of trademark infringement. This usually shows up as a cease and desist letter backed with the threat of legal action if you continue to use the mark.