Before getting into the nitty-gritty about what a trade mark attorney does, let’s go back to basics: what exactly is a trade mark?
Aside from your original business idea and your people, a trade mark is a vital company asset.
It can be a word, logo, shape, and colour, even a sound that indicates the commercial origin of your product or service. It highlights the quality and source of goods, which, over time, attaches goodwill to your trade mark.
Registering your trade mark means you can stop other businesses using a similar mark without your permission.
OK, so now we’re back to the original questions – what is a trade mark attorney and do you need one?
What is a trade mark attorney?
According to Wikipedia, a trade mark attorney is: ‘is a person who is qualified to act in matters involvingtrade marklawand practice and provide legal advice on trade mark and design matters.’
In plain English that means they are a lawyer who is specially qualified to advise on trade mark law and can:
- Act as an agent to apply for and obtain trade mark registrations
- Offer legal and technical advice to clients on a whole range of trade mark issues, including selecting new trade marks and ensuring your chosen mark is registrable
- Enforce trade mark rights in the case of infringements
- Monitor trade marks to check for misuse
- Provide legal advice on licensing, brand identity and copyright issues
- Find commercial resolutions to disputes
You might be thinking I can Google all of that stuff and do it myself.
That’s a possibility, but you’ll be opening up your business (the one you’ve poured your heart, soul and bank balance into) to a considerable amount of risk. After all, if you were buying a house would you do your conveyancing or would you get a solicitor to do it for you?
Why you need a trade mark attorney
Trade mark registration can be an expensive process, which is why many business owners think about doing it themselves. But, in the words of Red Adair:
“If you think it’s expensive to hire a professional to do the job, wait until you hire an amateur.”
In this case, the amateur is you.
- Filling out your application incorrectly canresult in rejection (i.e. because of choosing the wrong class of goods or services – of which there are 45!) meaning you will lose your filing fees. If you want to try again, you’ll have to pay the full costs again
- The application process can take five to eight months. Rejection of your application means reapplying and potentially waiting a further eight months for trade mark protection
- Filing your application means yourtrade mark is only provisionally protected; you can’t enforce any infringements until registration is complete. Therefore, the longer it takes, the longer your competitors can potentially use your mark without any legal consequences
- If your application is opposed, you will have to defend your claim. In the UK, if you fail to do so, your application will be deemed abandoned, and you may be liable to pay third party costs
- You also have to decide whether you need to apply for a UK trade mark or an EU trade mark
- Once you have your trade mark you must monitor the market to make sure no infringements occur
Having a trade mark attorney file your application for you (and take care of everything else on the above list), results in a much lower risk of it being rejected, saving you time and money.
Time to make up your mind
Only you can decide which option you want to go with: