How do I best apply for a trademark?

September 28, 2010 6:12 PM

Hello, I'm applying for a trademark. Is it best to just head over to the uspto.gov site and take it from there? or use any pro bono or paid work I could find from an attorney. A laymen such as myself could lost in the wrong forms? Thanks
posted by KHinds10 to law & government (6 answers total)

It is possible to file a trademark application on your own, but the pitfalls are numerous. If you can do it, I would recommend finding a trademark attorney to help you file. They can help you avoid problems with the examining attorney and if you should get a substantive objection, they can help you try to get around it.

If you do it on your own, be sure to read the instructions on the form. The PTO has tried to make it as user friendly as possible (with varying results). And, SAVE YOUR DATA!! Otherwise, you'll have to reload the form and that's a pain.

Best of luck!
posted by Leezie at 6:17 PM on September 28, 2010 [2 favorites]

I am an IP attorney, but I am not your IP attorney. This is not legal advice.

If you are cost-sensitive, I would recommend contacting a competent IP attorney to see if a free initial consultation is available. You'll probably have more luck with a solo practitioner than a firm. In a few minutes an attorney should be able to tell you if your case is unusual or likely to run into problems. A trademark application can be done on your own, but if you're doing anything out of the ordinary it is probably worth it to have representation. Inquire about a fixed fee arrangement where you know how much it will cost up front and exactly what you're paying for.
posted by jedicus at 6:30 PM on September 28, 2010 [2 favorites]

One resource that you may not be familiar with is the US Patents and Trademarks Office Depository Library Program. If you would like assistance looking up trademarks, researching with the USPTO at a basic level, and figuring out some of your next steps (a lawyer is probably in the future, as noted above), try talking to one of the libraries on this list.

Please note that this program is not intended to take the place of legal advice (which is again incredibly valuable and necessary), but rather to disseminate to the public (you, in this case) information about the USPTO and patents and trademarks that have been filed with them. This is what they do/have.

When you do get around to looking for an attorney, you'll want to look at this list of attorneys and agents registered to practice before the USPTO. That may not be the best route to take, but if you've got a complicated case, you'll probably need one of these specialists at some point (note: I am in no way a lawyer, this is not legal advice, the lawyer types above are more aware of the nuances of these things).
posted by librarylis at 9:03 PM on September 28, 2010

yet another resource that you should be aware of is a Nolo book.


Nolo books are good starting points and can help you figure out whether you need an attorney or not.
posted by Twinedog at 10:43 PM on September 28, 2010

When you do get around to looking for an attorney, you'll want to look at this list of attorneys and agents registered to practice before the USPTO.

That list is for patent attorneys and agents (of which I am one). That would be useful if you were considering applying for a patent, but an attorney does not need to be registered with the PTO in order to help you with a trademark application (in fact there is no comparable registration process for trademark matters). Patent agents cannot, generally speaking, represent other people in trademark matters, so a fair number of people on that list wouldn't be able to help you at all. Further, not all patent attorneys do trademarks.

If you decide to contact an attorney, just look for a competent trademark or IP attorney in your area. If you need help with that, your state bar may have an attorney finder, or you can use Martindale.
posted by jedicus at 6:22 AM on September 29, 2010 [1 favorite]

Thanks everyone! I will be looking more into it and now have a great start.
posted by KHinds10 at 9:09 PM on September 30, 2010