As an experienced trademark attorney, I am frequently asked if individuals or small businesses need an attorney to register a federal trademark. The short answer is no, just like you don’t technically need a mechanic to change a car’s transmission or do a major engine overhaul. However, in both cases, it is still advisable to hire a professional.
First, it is essential to conduct a thorough search of all available public records to determine if the name and/or logo you are proposing is similar to names or logos already used in commerce by others.
The United States Patent and Trademark Office website allows you to search public records online for free. However, smart companies hire a third-party research company to do this extensive research for them. If you try to do such a search yourself, you will probably miss something, and that could create major problems for you in the future. In addition, there are multiple sources of information on unrecorded, but still relevant, “common law” uses that should be considered.
This voluminous investigation will undoubtedly reveal third-party uses that are somewhat similar in some way, shape or form to your proposed use. For example, if you are interested in using the “COMPUTER” brand in relation to jeans, there will be other brands with “computer” in them. Are they confusingly similar? That is the key question, and like most subtle questions in law, it is often a matter of degree and professional opinion.
Once you are comfortable with the knowledge that your proposed brand name and logo are free from material and conflicting third-party uses, there are still a number of questions to ask: Is the brand “generic”, that is, the name of the class? of the goods for which you intend to use it?
For example, the trademark “computer” cannot be registered for use in connection with computers. However, “computer” could theoretically become the brand name for a pair of jeans, because in that context, it is actually “arbitrary” or “fantasy.” Other categories of marks are “merely descriptive”, that is, do they simply describe an attribute of the product you are marking? Is the term “suggestive”, that is, it does not describe but suggests a characteristic of the products? A legal professional can assess this issue based on how similar cases have been handled in the past.
If you are still comfortable with the proposed trademark, then you will need to file a formal application with the United States Patent and Trademark Office. This application costs a fee of several hundred dollars to thousands of dollars, depending on the number of “classes” of goods or services with which you intend to use the trademark.
Eventually, you will receive a response from an Examiner who works in the Trademark Office. That examiner will likely ask you a number of questions about your proposed mark and will often seek further clarification on your application. BEWARE. Anything you say in response to these questions will become public knowledge as part of the government file.
Also, anything you do in response to these Office Actions may limit or affect your rights later. For example, denying part of the brand or restricting the kinds of products you search for a brand for can come back to haunt you later. It’s easy to give away your rights, but it’s much more difficult (and sometimes impossible) to get them back.
So, to answer the recurring question, you don’t technically need a lawyer to apply for a US federal trademark for a new mark that you intend to use in commerce. However, it is a long and complicated process, especially if you are not familiar with it. And just like replacing a car transmission, it takes skill and experience.
