What Can a Trademark Attorney Do for Me?
Written by JLG - May 21, 2025
Securing a trademark is an important step for any business looking to protect its brand. However, the process can be complex, and mistakes can be costly. This is where a trademark attorney comes in. But what exactly can a trademark attorney do for you? Understanding their role can save you time, money, and potential legal trouble down the road.
1. Conduct a Comprehensive Trademark Search
Before you invest in a brand name, logo, or slogan, a trademark attorney can conduct a detailed search to ensure your chosen mark is available. This search is far more thorough than a basic online search. It covers:
- Federal trademark databases (like the United States Patent and Trademark Office or USPTO).
- State trademark records.
- Common law databases (unregistered trademarks in use).
- Domain names and business directories.
A thorough search helps you avoid costly disputes with other businesses that may have similar marks.
2. Provide Strategic Advice on Trademark Selection
Not all trademarks are created equal. A trademark attorney can help you understand the difference between:
- Generic marks (e.g., “Coffee” for a coffee brand) — which are not protectable.
- Descriptive marks (e.g., “Sweet Shop” for a candy store) — which are weak and difficult to protect.
- Suggestive, arbitrary, and fanciful marks — which are stronger and offer better protection.
An attorney can guide you toward a name or logo that is not only creative but also legally strong.
3. Prepare and File Your Trademark Application
Trademark applications can be complicated. An experienced trademark attorney can:
- Properly classify your goods or services.
- Accurately describe your trademark.
- Ensure you meet all USPTO requirements.
- Avoid common mistakes that can delay approval.
This reduces the risk of rejection or costly legal challenges later.
4. Respond to USPTO Office Actions
If the USPTO has concerns about your application, they will issue an Office Action. These can be due to:
- Likelihood of confusion with an existing trademark.
- Descriptive or generic terms.
- Technical errors in the application.
A trademark attorney can help you respond to these issues with a clear and persuasive argument, increasing the chances of your application being approved.
5. Monitor Your Trademark for Potential Infringement
Registering your trademark is just the beginning. A trademark attorney can help you monitor for unauthorized use of your mark by others. This might include:
- Watching for similar marks being registered.
- Identifying unauthorized uses in the marketplace.
- Sending cease-and-desist letters when necessary.
Proactive monitoring can help you maintain your brand’s integrity.
6. Enforce Your Trademark Rights
If another party uses your trademark without permission, a trademark attorney can help you enforce your rights. This may involve:
- Negotiating with the infringing party.
- Filing a complaint with the USPTO’s Trademark Trial and Appeal Board (TTAB).
- Taking legal action in federal court if necessary.
Having a trademark attorney ensures your interests are protected throughout the process.
7. Maintain and Renew Your Trademark
Trademarks require ongoing maintenance to remain active. A trademark attorney can help you:
- Track important renewal deadlines.
- Submit necessary maintenance documents to the USPTO.
- Advise on how to properly use your trademark to maintain its strength.
Do I Really Need a Trademark Attorney?
While it is possible to file a trademark on your own, even small mistakes can result in lost protection, costly disputes, or unnecessary delays. A trademark attorney can guide you through the process, protect your brand, and give you peace of mind.
If you are serious about protecting your brand, a trademark attorney is an investment worth considering. Contact us at Jafari Law Group for a free consultation, and let us help you protect what you have worked so hard to build.