Why I Should Hire a Trademark Lawyer?

Hello!

Welcome Back.

As I have previously stated, many of the clients I obtain are those who have tried to register their trademarks without the assistance of an attorney and the USPTO rejects their application. Consequently, I have started this series appropriately titled "Why I Should Hire a Trademark Lawyer" to address common questions or pitfalls many trademark owners commit when attempting to navigate the USPTO on their own. Today, I am going to discuss in depth the number one pitfall:

1. Not obtaining or performing an adequate trademark search.

A simple search on Google to determine whether a trademark name, logos, or taglines are in use by another party, simply will not do. If I submitted a trademark application to the USPTO, based on a Google Search, I would be sued for malpractice. This is a big big public misconception. There are thousands of viable trademark claims or rights that simply do not show up in a Google Search. Why?

a. Some businesses do not own a website,
b. Some business are operating under DBAs that search engines may not find,
c. Some businesses, do not do any active advertising or marketing

However, this list is not exhaustive. There are so many mom and pops that fall under this category. You would not know if they existed unless you hired an attorney or a search company to do a comprehensive trademark search.

Another misconception is that if a search is performed using the USPTO's trademark database, and the name is not taken, you are in the clear. WRONG. WRONG. WRONG. The USPTO's database only includes registered trademarks, not common law trademarks. A common law trademark right exists when one is the first to use the mark in their region, regardless of whether the mark has been registered with the USPTO.

Once the USPTO receives your trademark application, they will perform a comprehensive search and if your trademark is already in use, your application will be rejected. In addition, you will have to possibly choose another trademark name, logo, and/or tag line.

So before deciding to file a trademark application, consult with an attorney regarding a comprehensive search. It will save you time, headaches, and money.

In my next post, I will give an detailed example on what a comprehensive search includes.