March 15, 2024

There are many projects that we can DYI and sometimes it works out. But many other times it makes good business sense to hire a trained professional from the start — including when registering your trademark. A stitch in time saves nine (and may also save you dollars and headaches as well). 

Am I required to hire an attorney to register my trademark?

If your domicile is located in the United States or its territories, then you are not required to hire a U.S. -licensed attorney for the trademark registration process. If you have a foreign domicile, then you are required to hire a U.S.-licensed attorney to represent you in the registration process and any proceedings with the Trademark Trial and Appeal Board. 

What qualifications must the attorney have?

An attorney must be licensed and in good standing with the bar of the highest court of any U.S. state or territory in order to represent clients with a federal trademark application, registration, or proceeding before the USPTO. In other words, an attorney licensed in any state can assist you with your federal trademark application and representation. 

However, an attorney must be licensed in a specific state if they are going to assist with a filing at the state level. Remember, a federal trademark registration allows you to use the mark exclusively throughout the U.S. while a state registration only provides certain protections within the particular state of registration. 

Why is an attorney worth the investment?

A U.S.-licensed attorney with trademark experience can help guide you on important matters such as the search process, identifying the correct basis for your mark filing, and selecting a suitable specimen to properly demonstrate that you have used your mark in commerce.  Furthermore, your attorney can craft required responses to the USPTO examining attorney, help you understand the scope of your rights, and help you protect your rights in the future. Again, some move ahead without a qualified attorney. However, doing so may result in delays or issues with mark registration, rejection of your application, or abandonment of your mark. Why take the risk? 

Let’s protect your brand! Schedule a call with MJ Vuinovich at (928) 233-6800.