The short answer is No, you can always do it yourself. Even so, it may be a good idea to use an experienced trademark attorney.
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Most businesses prefer not to use an attorney if they can avoid it, simply because of the expense. But an experienced trademark attorney can guide you in things such as:
- How to select a trademark that is less likely to be rejected by a trademark examiner;
- Conducting a search for pre-existing trademarks so you don’t have problems registering your trademark, or even with trademark infringement;
- Creating an appropriate list of goods and services that properly covers what you plan to use your trademark for, and is also more likely to be acceptable to the trademark examiner;
- Quickly and easily processing complex trademark application forms that you’re not familiar with.
If you’re based in another country and trying to secure a US trademark, you may choose to use a a trademark attorney in your own country as you get started. But because trademark rights are specific to each country (or jurisdiction, in the case of multi-country trademarks such as the European Union’s Community Trade Mark), it’s standard practice to use a trademark attorney in each country where you register your trademark. US normally companies use a US trademark attorney, who then hired trademark attorneys in each country where the US company wants to register a trademark.
If you’re based outside the US and use the Madrid Protocol (that is, you have an existing trademark application in your own country), you can designate the US (via a Request for Extension of Protection or REP) without using a US trademark attorney. To do this, just use the forms provided by the World Intellectual Property Organization (See www.wipo.int).
If the USPTO issues an Office Action rejecting your trademark application, only you, as the owner of the application, or an attorney who is licensed in the US can file a response. (Some Canadian attorneys are able to respond for Canadian trademark owners.) A non-US attorney can’t represent you or file the response to an Office Action from the USPTO.
Although you can always file trademark applications and respond to Office Actions as a trademark owners, using an experienced trademark attorney is especially wise in certain circumstances, such as:
- You receive an Office Action that rejects your application based on descriptiveness (including geographic descriptiveness) or likelihood of confusion with someone else’s pre-existing trademark. Responding to these Office Actions normally requires researching US case law for information to support your application.
- The description of goods and services in your application is lengthy and has been rejected as vague or otherwise unacceptable. An experienced trademark attorney can guide you through what revised descriptions will be acceptable.
- You want to file several trademarks in the US. An experienced US trademark attorney can guide you in creating a strategy to protect your brands and take advantage of any benefits under US that you may be entitled to based on non-US trademarks that you already own.
- You are less comfortable using English. Rather than risk misunderstandings with the USPTO, you can discuss concerns with a US trademark attorney until you are confident that the issues are being addressed properly.
A trademark is a valuable asset in which you have invested significant time and money to create and grow. An experienced US trademark attorney can bring much more value to you in securing your trademark portfolio than he or she costs.