- Hi everyone, I'm I'm attorney Aiden Durham
with 180 Law Co. in Denver, Colorado,
and welcome back to All Up In Yo' Business.
(cheerful guitar music) (keyboard clicks)
In this episode of All Up In Yo' Business,
I'm going to answer the age old question,
"Do I need an attorney to get a trademark?"
But before we get into it, please be sure to like,
subscribe, and share, and check the description
for some links to additional information
and resources on how to get a trademark.
So the big question,
"Do I need an attorney to get a trademark?"
The simple answer is no, no, you don't,
unless you do.
So, for most people, for most applicants,
you're not required to have an attorney represent you
or help you with the trademark application process.
There's no law or requirement forcing you to do that.
You can do it pro se,
which means on your own without a lawyer.
But, there are a few situations
where you do actually need one.
This primarily applies to applicants
who are not domiciled in the U.S.
So, the USPTO, the United States Patent
and Trademark Office, they recently within the last year
made some changes to the requirements for applications
and started requiring that any foreign applicants
have legal representation
and have an attorney represent them.
The reason for this, I mean, there are a lot of reasons,
but the biggest one was to prevent abuse
of the trademark registration process,
'cause in the U.s. there's really not a ton of oversight
with regard to trademark applications
and whether people are making fraudulent statements
in the application or otherwise giving
some kind of false information.
And when the person doesn't live in the U.S.,
isn't located in the U.S., and the USPTO,
if the government finds out someone did something wrong
or unlawful, it's really hard for them
to do anything about it if this person
isn't even in the U.S.
So, this partly was
began in order to
try to curb that misuse and fraud of the trademark system.
And so, unfortunately for any non-U.S. applicants,
you do actually need a lawyer to get a trademark.
So what does it mean domiciled versus non-domiciled?
Basically, the USPTO says if you consider the United States
to be your permanent legal residence,
then that means you're domiciled in the U.S.
Or, in the case of a business like an LLC or a corporation,
if the principle office address
that's the primary business location is in the U.S.,
then that counts as a U.S.-domiciled applicant.
And so if you're unsure of whether you are U.S.-domiciled
or not, really just kind of think of
where do you consider yourself to live.
Even if you travel around a lot, maybe you don't have
an actual permanent spot that you live,
do you consider the U.S. to be your home,
or do you consider another country to be your home?
If you have an address
that you consider to be your home address in the U.S.,
then that's enough, really, for that domicile requirement,
as long as you consider it
to be your permanent legal residence here.
But if none of that exists,
if you're just a foreign applicant,
you're gonna do business in the U.S.
but you have no actual presence or residence
or physical presence here, then you will need an attorney
to help you with the trademark process.
If you happen to file an application,
if you're non-U.S. domiciled
and you file the application on your own,
or if you filed it prior to I believe August 3rd;
so if you had filed an application
prior to August 3rd, or after that rather,
and you weren't represented by an attorney,
then the examining attorney
who's assigned to your application
will issue an office action explaining
that due to the fact that you're not domiciled in the U.S.,
you will need an attorney of record
to represent you through the process.
So, it's not like you're completely out of luck
if you've already filed your own application
without knowing about these requirements.
You will get an opportunity to rectify that and correct it,
and find an attorney to help you with the remaining process.
Regardless of all of that,
even if you are domiciled in the U.S.
and you don't need a lawyer to help you
with the trademark application, it is still a really,
really good idea to have an attorney help you anyway,
even if it's not needed, it's still a really good idea.
Why?
I'll tell you why, there are a lot of reasons.
The first is a lawyer's going to be able to tell you
if you should even register your trademark
in the first place.
Not every trademark is worthy of registration
or eligible for registration.
Sometimes, you have to put more into it.
Sometimes you have to use a trademark
to make it be a trademark.
Well, not true, you always have to use a trademark
before it becomes a trademark,
but sometimes you have to put it into use
and build some notoriety and distinctiveness around it
before you can actually get the trademark registered.
So that's something a lawyer's going to be able to tell you
is don't waste your money on registering this trademark,
'cause it's not gonna do you any good.
Or the opposite, please spend your money on this,
because it's gonna be really important
and really valuable for your business.
So you're gonna get that advice one way or the other.
And then even before you start the application,
a good trademark attorney is going to do a full search
for you to make sure, again,
it's worth it to file the application.
A trademark attorney is going to search
for existing trademark registrations
or existing applications
that might be confusingly similar to yours.
They'll also typically search state-level registrations
and common law uses and business listings
and domain name uses, too.
It varies depending on the attorney,
we all do different types of searches and different things,
but a lawyer is going to help you do that.
And then even more importantly,
will help you analyze that search,
'cause you might be able to do the search yourself,
there are trademark search companies
that will perform the search for you
and give you a huge report,
and you don't have to be a lawyer to get those.
But, you'll now have this huge report of search results
and findings, and you may not know what to do with that.
Whereas a trademark lawyer will know
how to analyze those results and determine
what the odds are or the likelihood
of successfully registering your trademark.
And then along those same lines, with that search,
often us lawyers, we start to start strategizing
in our head depending on the search results.
If we see a trademark out there
that's kind of similar to our client's trademark,
we can think strategically
of ways to file the application
to avoid what little chance there might be,
or to help even minimize even more that risk
that there might be a likelihood of confusion
or that the trademark might otherwise be rejected.
And really, this typically comes down to
figuring out the proper descriptions
of goods and services in the application,
'cause sometimes we'll want to be very careful
and strategic with those descriptions
in order to avoid potential conflict with another one.
Whereas applicants who are represented by lawyers,
they're not doing this with any help,
they're doing it on their own,
typically won't know to think that far ahead.
They're gonna look for the proper goods and services
that apply to their business,
but they're not going to look at it
in the context of these existing trademarks
and their goods and services descriptions.
So, those are a few reasons why
it really is important to have a lawyer
help you with the trademark application process,
even if it isn't required.
Really, we are going to make sure that you're not
just completely wasting your money and wasting our efforts
on this trademark application,
and we're gonna do everything that we can
and that we know to help increase the chances
of your trademark successfully being registered.
And finally, the last reason, ho, it's a really good idea
for an attorney to help you
with the trademark application process is
because of the dreaded office action.
A large majority of trademark applications
will see one sort of office action or another
in its application process.
Often, these are gonna be big deal office actions
that are based around a likelihood of confusion
and essentially rejecting registration
because of a likelihood of confusion
of this other trademark.
It is very, very unrecommended that you try to respond
to one of those office actions on your own.
Often, it's necessary to do a lot of legal research
and you need to include citations to case history
and the precedent that you're citing in your response.
And so, there really is an aspect of it
that requires some level of legal training
or legal writing and research knowhow.
So, especially when it comes to those office actions,
if getting your trademark registered is your goal,
then you should definitely have a lawyer
help you with responding to any office actions,
if nothing else.
So to cap it all off, to summarize all of the fun,
do I need a lawyer to get a trademark?
No, you don't, unless you're not domiciled in the U.S.
But, it's still a really good idea either way.
Like I said, check the description below
for some additional resources.
If you are interested in getting a trademark
and you're still on the fence about working with a lawyer,
despite my protests to the opposite,
you know, I've got an option for you, you can check out
"Brandish: DIY Your Trademark Application,"
which is my on-demand webinar that teaches you step by step
how to complete the trademark application
and how to prepare for it.
So, I walk you through my whole process
of doing a clearance search,
for searching for other trademarks
and determining the right goods and services
to use on the application,
how to prepare the proper specimen,
really goes into a lot of detail
for each step of the way, up to filing the application
and hitting that submit button.
So, check the description for a link to that.
Or, if you are sufficiently scared by this,
which I hope you are, I would really prefer all of you
to not file your own trademark applications,
even if you don't work with me, work with some other lawyer.
But if you did want to work with me, that would be great.
And, you can check out Brand Bombshell,
which is my all-inclusive trademark registration package,
where I handle every step of the process
so you don't have to think about it twice.
Finally, you can check the description
to download my free guide,
"Three Tips For Trademarking Your Brand."
So, if you're still not quite ready to get that trademark,
download this guide so you're at least
getting the wheels rolling for when you are ready.
Drop a comment below, let me know what you think.
Oh, and by the way, just disclaimer,
no, I didn't go to Harvard, this is just a comfy shirt,
but no, I did not go to Harvard,
not quite that smart, or that rich.
Thank you all so much for watching.
I'm Aden Durham and I'll see you next time.
(enchanting music)