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The Zest

What a Trademark Attorney Actually Does (and What a Filing Service Can't)

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A trademark attorney is a licensed lawyer whose work is brand names, logos and slogans: checking whether a name is available, applying to register it, answering the USPTO when it pushes back, and dealing with disputes. There's no special trademark license. Any US lawyer who's an active member in good standing of a state bar may represent clients before the USPTO in trademark matters.

Whether one is worth it for you is a fair question with no single answer. This article lays out what the role covers, who is allowed to do it, and how it differs from a filing service, so you can judge for yourself.

The work, in the order it usually happens

Clearance comes first. Before you commit to a name, a lawyer can search for marks that might conflict and give you a legal opinion on the risk. The opinion is the part that matters. Anyone can pull a list of similar names. Deciding which ones are a problem takes legal judgment about how alike the marks are and how related the goods are. I wrote about that in Why Most Refused Trademark Applications Never Stood a Chance.

Then the application. That includes deciding who the owner is, which filing basis applies, how to describe the goods and services, which classes to file in, and what to submit as proof of use.

Then the back-and-forth with the USPTO. An examining attorney reviews each application and may issue an office action raising a problem. Some are small fixes. Some are refusals that call for a written legal argument with evidence. An Office Action Isn't a No. It's a Three-Month Clock. covers that stage.

Then the Trademark Trial and Appeal Board, if it comes to that. The TTAB is a body inside the USPTO that works like a court for registration questions. It hears appeals from final refusals, oppositions (where someone objects to your application before it registers) and cancellations (where someone tries to remove a registration). The USPTO describes these proceedings as having specific procedures and strict deadlines. I covered the opposition side in this article.

After registration, the work shifts to keeping the registration alive with periodic filings and to enforcement: watching for conflicting uses, sending or answering demand letters, and negotiating agreements such as licenses, assignments and coexistence deals.

The USPTO's own list of what an attorney can do tracks the same ground: legal advice about your mark, a clearance search before filing, preparing the application, responding to the USPTO's legal correspondence, enforcing and maintaining your rights, and representing you at the TTAB.

Who is allowed to do this work

This surprises people. Patent law has a separate registration, with its own requirements, for anyone who wants to represent inventors at the USPTO. Trademark law doesn't.

Under the USPTO's rules, an "attorney" is an active member in good standing of the bar of the highest court of any state, which includes DC and US territories. Attorneys who meet that definition may represent others in trademark matters, and they aren't required to apply to the USPTO for registration or recognition first. Being registered as a patent practitioner doesn't, by itself, authorize trademark practice. A patent agent who isn't a lawyer can't take trademark clients.

So "trademark attorney" is a description of what a lawyer does, not a credential. A lawyer who files one application a year and a lawyer who files several a week are equally authorized. What differs is experience, and the USPTO's ethics rules do require every practitioner to provide competent representation.

Non-lawyers generally can't represent anyone in trademark matters. The rules keep one narrow exception for people the USPTO recognized before 1957. Lawyers licensed only in other countries generally can't either, apart from a limited reciprocal arrangement that still requires a US attorney on the file.

What the USPTO counts as practicing trademark law

The rules spell out what counts as practice before the Office in trademark matters. The list includes advising a client about a planned trademark filing, preparing or prosecuting an application, preparing an amendment that may need written argument, preparing filings that maintain or change a registration, and conducting an opposition, cancellation or appeal at the TTAB.

That list is useful because it draws the line. If someone who isn't a US-licensed attorney is doing those things for you, they're doing work the rules reserve for attorneys.

How a filing service is different

Plenty of online companies offer to file trademark applications for a low fee. The USPTO's guidance is direct about them: trademark filing companies are not the same as law firms. Some offer legitimate services and some don't, and the USPTO doesn't endorse any of them.

The practical differences are these. A non-attorney can't give you legal advice, which means they can't tell you whether your name is likely to be refused, which basis to choose, or how to argue against a refusal. A non-attorney can't sign your filing for you or act as your representative. Only you or your attorney can sign. And the USPTO says a firm that offers to handle filings for others has to do that through a US-licensed attorney who works with you directly and either signs the filing or has you sign it.

When a filing company breaks those rules, the applicant can get hurt. The USPTO lists its remedies, and they include striking documents from the record and terminating applications. More on the bad actors is in the article on trademark scams.

None of that makes every low-cost service a problem. Some are run by licensed attorneys. The question to ask is who is doing the legal work and whether that person is a US-licensed attorney you can actually speak with.

Is it worth it?

It depends on what you're protecting and what you're comfortable handling.

If you're based in the US, you aren't required to hire anyone. You can file and manage your own application. The USPTO's advice to people who do is to be ready to act as their own attorney, because its staff can't give legal advice.

The cost side is simple. USPTO fees are the same either way, and a lawyer's fee comes on top. The benefit side is harder to measure, because it shows up as problems that don't happen: a name you didn't file because the search turned up a conflict, a description that didn't need fixing, a refusal that got a proper answer. The USPTO says an attorney may save you money over time. It doesn't say will, and I won't either.

A simple way to weigh it is to ask what it would cost you to lose this name in a year. If the answer is a new logo file and a shrug, your calculation is different from someone who has the name on a storefront and ten thousand units of packaging.

If you'd like to see what the role looks like in one practice, you can see how the search and filing packages work on the services page, and the FAQs page answers most of what comes up before a first call.

Book a free 15-minute discovery call with the attorney (opens in a new tab)

(No legal advice is given on the discovery call. It's a chance to tell me what you're building and hear how the process works.)

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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