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FLORIDA ENTREPRENEUR LAW

Working with a Trademark Attorney When Filing a Trademark Application: Why It’s Worth It

Jan 18, 2025 | Blog

Filing a trademark application with the United States Patent and Trademark Office (USPTO) can seem like a straightforward process—after all, the USPTO provides an online portal, and there’s no shortage of information available on how to file, the protections afforded with registration, and even estimated timelines for processing. However, the reality is that securing a trademark involves much more than simply filling out forms. Working with a trademark attorney offers significant benefits, both in avoiding costly mistakes and in ensuring your brand is fully protected.

1. Navigating the Complex Process

The trademark application process is more complex than it appears. It requires a detailed understanding of legal principles, such as the distinction between different classes of goods and services, the importance of proper specimen submission, the nuances of trademark searches, and the evaluation of the risks of trademarking or continued use of your mark(s). A small misstep in any of these areas can lead to delays, office actions, or even suspension of your application. A trademark attorney knows how to navigate these complexities, making the process more efficient and less stressful for business owners.

2. Comprehensive Trademark Searches

Before filing, it’s critical to perform a comprehensive trademark search to ensure your proposed mark isn’t already in use or too similar to another pending or registered mark. While the USPTO search engine is available to the public, interpreting the search results can be tricky. Many applications are refused because the mark is “confusingly similar” to an existing one (also known as a Section 2(d) refusal)—a determination that is based on various legal factors. A trademark attorney can conduct thorough searches and analyze the results to minimize the risk of rejection of your application and how to overcome them.

3. Avoiding Common Pitfalls

One of the biggest risks in filing a trademark application without legal guidance is running into avoidable pitfalls. From incorrectly identifying the owner of the mark to filing under the wrong basis (use vs. intent to use), there are many ways an application can go wrong. Trademark attorneys are trained to spot these issues before they become problems, ensuring your application meets all the legal requirements from the outset.

4. Responding to Office Actions

If the USPTO issues an office action—an official letter outlining issues with your application—it’s important to respond properly and timely. Some office actions are straightforward, but others may involve complex legal arguments or even negotiating collaborative agreements with other trademark owners to give you a better chance at getting your mark registered. A trademark attorney can help craft a strong response to ensure the best possible outcome for your application, often avoiding the need for costly appeals or even rebranding.

5. Protecting Your Brand Long-Term

Trademark registration is an investment in your brand’s future. Beyond the initial filing, maintaining your trademark rights requires ongoing diligence, including monitoring for potential infringement and filing renewals. At Florida Entrepreneur Law, we offer trademark monitoring and maintenance services and can assist with these ongoing responsibilities, ensuring your brand remains protected as your business grows.

Conclusion

While filing a trademark application on your own might seem cost-effective in the short term, the expertise and guidance of a trademark attorney can save you from making costly mistakes and ensure your brand is properly protected. Whether you’re just starting out or looking to expand, investing in legal counsel will pay dividends in the long run. This is why working with a trademark attorney is not just valuable but essential for any business serious about protecting its intellectual property.
At Florida Entrepreneur Law, our Intellectual Property Team is ready to support you from application to registration and even assist you in maintaining and policing your mark to protect your intellectual property rights. If you have a design, logo, slogan, or marketing idea or inquiry, feel free to contact us for a consultation to discuss how we can help you protect your brand.

By: Karissa Rivera, Esq.

Published: January 18, 2025

Karissa is an Associate Attorney in FELPA’s Fort Lauderdale office. Karissa focuses her practice on intellectual property, business litigation, and corporate transactions. Karissa is currently serving as intellectual property counsel to numerous businesses throughout the state of Florida and is poised to serve businesses across all 50 states with their federal trademark needs. Karissa is a member of the Business Law Section of the Florida Bar and is working toward intellectual property certification.

© 2025, Florida Entrepreneur Law.

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