Making Your Trademark Legal: What to Consider When Hiring a Lawyer

23 September 2016
 Categories: Law, Blog

Creating and registering a trademark for your business is an excellent way to set yourself apart from the competition, improve your social-media results, and increase your profits margins overall. To ensure that you don't run into any problems before, during, or after the registration of your trademark, it's a good idea to hire an attorney to work with. Here are a few important things to consider when consulting with potential lawyers and choosing which one to hire.

Duplication Research

One of the most important steps you'll have to take when preparing to file for a trademark is making sure that there aren't already any companies using the same or similar wording, designs, and colors as you. If you attempt to use a trademark that is too similar to one that has already been registered, you may find yourself getting sued for trademark infringement. So it's important to make sure that the trademark attorney you decide to work with is willing to do some research and make sure that the trademark you want to register will not get confused with another that's already registered.

Your lawyer should be able to search federal and state registration databases as well as common-law unregistered trademark databases for possible infringement problems. If an issue is found, your attorney should have the experience and knowledge necessary to make recommendations that will help you avoid any possible infringement lawsuits. Ask each potential lawyer you consult with to provide you with an outline of how they'll complete duplication research and what they can do to ensure you don't end up in legal trouble down the road.

Application Filing

When it comes time to file an application for your trademark, your lawyer will need to figure out the best way to describe your business and goods and prepare responses to any refusals you get from an examining trademark attorney at the United States Patent and Trademark Office. In addition to being refused due to a likelihood of confusion, the examining attorney may refuse your application for a variety of things, such as ornamentation.

The legal representative you choose to hire should not only provide you with initial filing services but also offer refiling and refusal response services until your application is accepted. Find out if the potential lawyers you consider working with have experience with application refusals and how quickly they can have responses ready if you end up receiving a refusal.

Rights Enforcement

It's also a good idea to consider ongoing trademark rights enforcement when hiring a lawyer. You'll need to ensure that other companies aren't infringing on your trademark rights once established, and a good lawyer can help you do just that. When consulting with potential trademark attorneys, find out what kind of trademark policing and enforcement services they offer.

Are they willing to do regular Internet and database searches to check for infringements? Will they send cease-and-desist letters on your behalf when necessary? Is there a base fee for this service, or will you be paying hourly? The answers to these questions will give you a good idea of what kind of protection you can expect your lawyer to provide as time goes on.

Add these considerations to a list of your own to ensure that nothing of importance is overlooked during your consultation meetings with lawyers from a variety of firms, such as Mohajerian A Professional Law Corporation