Why Pay a Trademark Attorney When an Online Trademark Company Can File the Application?

If you are thinking about registering a trademark, you may have already seen the ads. An online trademark filing company offers to prepare and file your application for what appears to be a fraction of what a trademark attorney charges.

That raises a perfectly reasonable question: Why pay an attorney if a less expensive company can file the same application?

For a business owner in the United States, hiring an attorney is generally not required to apply for federal trademark registration. You can file an application yourself, and there are companies that offer filing assistance. The important question, however, is not simply who can submit the application.

The better question is: What are you paying someone to do?

If the service is primarily entering information into an application and submitting it, that is very different from having an attorney evaluate the trademark, identify potential problems, advise you about your options, and prepare an application based on the protection your business actually needs.

Filing the application is only one part of the process

It is easy to think of a trademark application as a form. You provide the name of your business, describe what you sell, upload a logo or other information, pay a fee, and wait for the registration.

But several decisions must be made before the application is filed, and some can have consequences that are difficult or impossible to correct later.

For example:

• Who is the correct legal owner of the trademark?
• Is the mark strong enough to qualify for federal registration?
• Could an existing trademark create a conflict?
• Should the application cover words alone, a logo, or both?
• What goods and services should the application identify?
• Is the trademark already being used in commerce, or should the application be filed based on an intent to use it later?
• If the mark is already in use, does the evidence submitted with the application satisfy the United States Patent and Trademark Office’s requirements?

Those are not simply data-entry questions. They can involve legal analysis and strategic decisions.

That distinction matters because the goal is not merely to file a trademark application. The goal is to pursue a registration that provides useful protection for the business and its brand.

A trademark search is more than looking for an identical name

One of the most valuable parts of the trademark process can happen before an application is filed.

A business owner may search the United States Patent and Trademark Office database, find no identical trademark, and reasonably conclude that the name is available. Unfortunately, trademark conflicts are not limited to identical names.

Two trademarks can create a potential conflict because they are similar in appearance, sound, meaning, or overall commercial impression. The goods or services also do not have to be identical. The question can include whether the goods or services are sufficiently related that consumers could mistakenly believe they come from the same source.

A comprehensive trademark search can also extend beyond federal registrations and pending applications. Earlier users may have trademark rights even if they never obtained a federal registration.

The search itself is therefore only part of the job. Someone must interpret what the search reveals.

Imagine that you want to register a name for a skincare business. A search does not reveal the exact name, but it uncovers several similar names used for cosmetics, beauty products, and related retail services. The important question is no longer, “Is my exact name already registered?” It becomes, “How significant are these other marks, and what do they mean for my ability to use and register mine?”

That is a legal analysis, not simply a database search.

The application determines what you are asking the government to protect

A trademark registration does not give its owner unlimited rights to a word or phrase for every possible purpose. Trademark rights are connected to particular goods or services.

That makes the description of goods and services in the application especially important.

A description that is inaccurate may create problems during examination. A description that is unnecessarily narrow may fail to cover an important part of the business. And after an application is filed, the applicant generally cannot broaden the identification to add goods or services that were not within the scope of the original application. A new application may be necessary.

There are other decisions with similar consequences. Filing in the wrong owner’s name can create a problem that, depending on the circumstances, may not be correctable. Selecting the appropriate filing basis and submitting acceptable evidence of use also require understanding what the applicant is actually doing in the marketplace.

An attorney’s role is not simply to ask, “What should I type in this box?” It is to understand the business well enough to determine what belongs in the box and why.

What happens if the USPTO raises a problem?

Filing an application does not mean the trademark will be registered.

After filing, the USPTO assigns the application to an examining attorney, a USPTO lawyer whose job is to review trademark applications and determine whether they meet the legal requirements for federal registration. The examining attorney also searches for potentially conflicting federal trademarks.

If the examining attorney identifies a problem, the USPTO may issue an Office Action. Some issues may be relatively straightforward. Others may involve substantive legal grounds for refusing registration, such as a likelihood of confusion with an existing trademark or a determination that the proposed mark is merely descriptive.

This is another point where the difference between filing assistance and legal representation becomes important.

The USPTO examining attorney does not represent the applicant and cannot provide the applicant with legal advice. If a legal issue arises, the business owner must decide how to respond, whether an amendment makes sense, whether a legal argument should be made, and sometimes whether continuing to pursue the application is worthwhile.

When an attorney represents the applicant, the attorney can evaluate the issue in the context of the client’s business and provide legal advice about the available options.

Not every online trademark company offers the same service

It would be unfair to suggest that every online trademark company is the same or that every filing service should be avoided.

Some companies provide legitimate administrative assistance. Some offer access to licensed attorneys. Others may provide different levels of service depending on the package purchased.

The key is understanding exactly what you are buying.

If a company says that an attorney is included, find out what that actually means:

• Will you communicate directly with the attorney?
• Will the attorney conduct or review the trademark search?
• Will the attorney analyze potential conflicts?
• Who decides how your goods and services should be identified?
• Will the attorney review the application before it is filed?
• What happens if the USPTO issues an Office Action?

The USPTO specifically cautions consumers that trademark filing companies are not the same as law firms and advises consumers using filing firms to make sure any legal services are being provided by a qualified U.S.-licensed attorney.

Price comparisons are most useful when you are comparing the same services. A filing service and comprehensive legal representation may both end with an application being submitted to the USPTO, but that does not mean the work performed before and after filing is equivalent.

So, is hiring a trademark attorney worth it?

For some business owners, filing without an attorney may be a reasonable choice. U.S.-domiciled applicants generally have the right to represent themselves before the USPTO.

But the decision should be based on more than the cost of getting an application filed.

Consider what the trademark represents to the business. Is it a name you are still testing, or is it the brand you expect to build around for years? Have you already invested in a website, packaging, signage, advertising, inventory, or product development? Are you preparing to expand?

The more important the brand is to the business, the more important it becomes to understand potential problems before investing further in it.

Hiring a trademark attorney does not guarantee registration. No attorney can responsibly promise that. What an attorney can provide is legal judgment: evaluating the proposed mark, interpreting search results, identifying risks, helping make strategic filing decisions, preparing the application, and advising the client when issues arise.

That is the real difference.

The value is in the advice, not just the filing

When comparing the cost of a trademark attorney with an online filing company, do not compare only the price shown on the screen. Compare what is actually being provided.

Submitting an application is an important step, but it is not the entire trademark process. The decisions made before filing can affect whether the application encounters problems, what the resulting registration protects, and whether the business discovers a potential branding issue before or after investing more money in the brand.

For business owners who want legal advice and a strategy tailored to their particular trademark and business, working with a trademark attorney can provide value that goes well beyond completing an application. You can see exactly what is included in each of my flat-fee trademark packages.

Dinah Rainey Law helps business owners understand their trademark options and make informed decisions about protecting their brands. Explore the trademark resources on this website, or Schedule a Free Consultation if you would like to discuss your trademark needs.