Frequently Asked Questions
- To establish the ownership of your brand name nationwide
- To prevent counterfeiters from importing your brand
- To enforce your rights in court against infringers
Technically, not if you’re a citizen of the United States (foreign citizens must obtain the assistance of a licensed U.S. attorney). But trademark law is complicated, and without the assistance of an attorney, getting your application through the process can be much more difficult.
In a nutshell, you apply for a trademark with the USPTO. Then the USPTO assigns an attorney to examine your application for registration. If they reject it, correspondence between you (or your attorney) and the Examining Attorney begins until the mark is abandoned, allowed to register or issued a Final Rejection. There are other possibilities in between registration on the Principal Register and Final Rejection, and you can read more about the process HERE.
Obviously, that depends on a number of factors, but there are some things that we can know. It takes an average of around three months for an Examining Attorney to send you the first Office Action. If you never get an Office Action, and you breeze right through, it could take as little as 6 months to get all the way to the Principal Register. But the average trademark takes around a year or a little more to go through the whole process to a Final Rejection or registration on the Principal Register, and some marks can take years to register, depending on the specific circumstances.
An Office Action is essentially a letter from the USPTO telling you that your trademark didn’t get registered for some reason. That reason can be substantive – like the fact that there’s another mark out there that’s so similar people might be confused – or non-substantive – like you submitted the specimen in the wrong form or you need to disclaim a generic or descriptive part of your mark. You usually have a chance to respond to whatever reason they give you by correcting some non-substantive error or arguing, using legal precedent and authority, why the Examining Attorney got it wrong this time. Read more about Office Actions HERE.
Make sure to read all of the fine print, when these sites say they’ll get you “registration.” Most of those websites are not using licensed U.S. attorneys, or if they are, they’re just taking the information you provide from a form you fill out (which is just as confusing a lot of times as the USPTO application) and entering that into the USPTO application. Some are built on Artificial Intelligence, and they do the same thing – just apply for your mark using the information you entered into a form. There’s no real search or analysis of your mark, and you usually don’t get the personal attention of an experienced trademark lawyer.
If you’re going to use one of these services, you’re truly just as well off doing some minimal research in the Trademark Manual for Examining Procedure and rolling the dice yourself. Maybe you’ll get lucky. But whether you use one of those services or give it a go on your own, the odds are that you’re going to get an Office Action, and you’re going to want some help at that point. If so, I’m here for you.
If you are not a U.S. citizen, you are required by law to be represented by a licensed U.S. attorney when applying for trademarks. You can read about those requirements HERE.
Good question. Most of the time, you have to get a lawyer who is licensed in your state to represent you. That is not true with a trademark application. You can confirm that here: 37 C.F.R. §§ 2.17; 11.1; 11.14
A trademark applicant can be represented in the trademark application process by any attorney that is licensed and in good standing in any state in the U.S. I am licensed and in good standing in Tennessee, so I can represent you in your trademark application, no matter where you live. Which makes sense, because there are hundreds of thousands of trademarks registered every year, and they’re all in D.C. I don’t want to move to D.C. You don’t want to hire a high-priced D.C. law firm to help you protect your small business. I can do it from Nashville, Tennessee, and I’ll give it everything those firms could, no matter where you are.
No. That is something no one can/should promise you. I will be honest with you during the consultation and at every step of the way about what I think your odds are and whether I think it’s a good idea to apply for your trademark. But even that is not exact prediction. It’s just my educated opinion based on my knowledge of trademark law. No one can guarantee that your trademark will get to the Principal Register. There are too many variables for any mortal to account for. If I don’t think your mark is worth spending the time applying for, I will tell you. I have no interest in wasting your time and money when I know your mark is doomed. It frustrates me when I can’t get your mark registered, so I’m going to be as straight up with you as I can be at every point so that we’re on the same page about your chances.
Your trademark is not protected until you’re actually using it in commerce, meaning that you are selling your goods and services on the market in some fashion. Your trademark has some protection even before it registers, and it has more protection after it registers, but it has nothing until it’s being used. So, if you have a plan and a name or logo in mind, and you want to claim that before you are actually able to go to market with your product, you can file an “Intent to Use” application. This is just like a regular application, except that you obviously aren’t required to show use yet, and you can’t get the trademark registered until you prove use in commerce. Until then, you fill out the application, and instead of showing your use, you promise to use it in the near future. Then, when you start using it, you file proof with the USPTO that it’s in use, and the USPTO continues with the process from there.
No. I am able to charge such reasonable and affordable rates because I am not a big firm with associates and paralegals and parking garages and complicated discovery and legal research software to pay for. You need those things if you’re going to defend against a federal trademark infringement suit or sue someone for infringing your trademark. So to keep my costs low (and pass those savings on to you), and because I don’t like litigating, Wolfe Legal Services does not litigate cases, either in opposition proceedings or appeals before the Trademark Trials and Appeals Board or in federal district and circuit courts against infringers or accusers.
No. I am able to charge such reasonable and affordable rates because I am not a big firm with associates and paralegals and parking garages and complicated discovery and legal research software to pay for. You need those things if you’re going to defend against an opposition or oppose someone else’s trademark. So to keep my costs low (and pass those savings on to you), and because I don’t like litigating, Wolfe Legal Services does not litigate cases, either in opposition proceedings or appeals before the Trademark Trials and Appeals Board or in federal district and circuit courts.
However, I will monitor your application throughout the entire process and promptly let you know if your mark is being opposed and advise you on the next steps to take. And after your mark is registered, I can monitor your mark on a semi-annual basis for applications that you may want to initiate opposition proceedings against, if you decide to employ me for such.
There are several options, and we can discuss those in your consultation or during the representation. It could be a relatively simple cure, or it could be a very complicated and difficult argument. If your trademark has already been refused, it is important that you take action as soon as possible to avoid abandoning your application or receiving a Final Rejection.
Well, like any good government bureaucracy, the USPTO doesn’t just give its administrative services away. With most things you file at the USPTO, from applications to appeals, there is some filing fee associated with such.
A list of USPTO fees can be found HERE.
This is the least fun part, but we have to talk about it. I get started once you pay me for the agreed upon services and sign a representation agreement, not a moment sooner. I am able to charge such reasonable and affordable rates, because I don’t waste time chasing clients down for payments after the work’s been done, which takes time and money. For that reason, Wolfe Legal Services works like this:
- we will agree upon the services you want;
- we will agree upon the price for those services;
- then you will pay me what we agreed upon along with any filing fees and you will sign a representation agreement for the services; and
- I will perform the services we agreed upon.
If we stop short of filing, I will refund you the filing fees. You don’t have to worry about me not doing what you paid me for. I am bound by ethical and legal requirements in the state of Tennessee, the United States, and the USPTO. I’m not going to throw away my law license and career to scam you out of a few hundred bucks. But I’m also not going to spend my time and money chasing you down in collections and courts.
Well, I’m glad you asked. Basically, there are three tiers of trademark legal service available to you. The first and lowest tier are these sites that offer to “register” your trademark for you and typically charge around fifty to a hundred bucks. Most of the time, those services don’t search or analyze your trademark for that price. They simply take your information you filled into a form and transfer that into the USPTO’s application. Sometimes it’s AI; sometimes it’s a person in a call or data center cubical across the globe. But, if you know enough to give them the correct information so that your trademark application actually makes it on to the Principal Register, then you almost certainly didn’t need their services in the first place. You could do it yourself and probably have about the same odds. But doing it yourself is not easy, as I explain below.
On the opposite side, you can pay upwards of $500 per hour or more and thousands per trademark prosecution for a big firm to help you register your trademark. In that case, you’re not just paying for a lawyer’s knowledge and help. You’re paying for the rent on a high rise downtown somewhere; you’re paying for partners, office managers, collections departments, Christmas parties, branded coffee cups, giant fancy board room tables, and all sorts of things that don’t make any difference when it comes to getting your trademark done. And, in those big firms, even your few thousands of dollars don’t mean much to them when they’re in the throes of complex, multi-million-dollar litigation.
Or you could hire me. I keep my costs low by doing one thing well. I offer transparent flat fee services that you can see before we even talk and that you pay for before I get started, so I don’t have to worry about collecting. I know what it’s like to run a small business, and that’s why I run my operation this way. I also care about whether you get your trademark. Plus, I almost certainly know more about trademark law than you do, and I’ll be honest with you and guide you through every step of the way. That’s all you need, and that’s all you’ll pay for.
You don’t technically need an attorney, unless you’re not a citizen of the United States. If you’re a U.S. citizen, you do not have to have a law degree or a license to practice law to apply for a trademark on the USPTO’s website. But trademark law is a very complicated and unique area of law, and unless you get incredibly lucky, you’re going to have to study for a long time to understand all the nuanced and complicated laws, regulations and rules. Even then, there’s no certainty that you’ll get your registration. And an Office Action from the USPTO can be intimidating and complex, with citations to statutes and case law that you must refute and/or technical terms of art about application requirements that you’re going to have to comply with. If you don’t do it right, or if the Examining Attorney just doesn’t agree with your arguments for whatever reasons, then all that time you spent learning trademark law and time and money you spent applying for your trademark would have been wasted. I don’t know how much money you think your time is worth, but you’re going to want a trademark lawyer at that point. Why not get one from the start and save the time and money? And why spend more than you have to? I enjoy trademark law. Don’t ask me why; I cannot explain it myself. I can help you, and that’s all I charge you for – my personal help getting you your trademark.