Turner Padget Insights
Why You Need an Attorney to Register Your Trademark
Posted On April 17, 2025
Securing a trademark is an important step in protecting your brand, but the process is more complex than it may initially appear. While it is possible to file a trademark application with the United States Patent and Trademark Office (USPTO) on your own, working with an experienced trademark attorney significantly increases your chances of success and long-term protection.
Here’s why hiring a trademark attorney is not only a smart decision—but often essential.
1. Legal Expertise in Trademark Law
Trademark law is governed by a complex set of federal statutes, regulations, and case law. An attorney brings a deep understanding of these legal principles to your application process. They can interpret legal terms, help you understand what qualifies for trademark protection, and ensure your application is compliant with the rules of the USPTO.
Many applications are refused or delayed because the applicant misunderstands a basic legal requirement—something a qualified attorney will help you avoid from the beginning.
2. Thorough Trademark Search and Clearance
Before applying for a trademark, it’s essential to conduct a comprehensive search to make sure no existing mark is similar enough to cause confusion. The USPTO will reject any application that is too close to an existing registered mark or even a pending application.
While the USPTO’s online database (TESS) is available to the public, interpreting the results requires skill and legal judgment. A trademark attorney has the tools and experience to conduct a professional clearance search that goes beyond simple keyword matches. They will assess the likelihood of confusion, evaluate the strength of your mark, and determine whether it is safe to proceed.
Failing to perform a proper search—or misinterpreting search results—can cost you significant time, money, and effort if your application is later refused or if you are sued for infringement.
3. Accurate Classification of Goods and Services
The USPTO requires you to classify your goods and services according to an international classification system. Choosing the correct class or describing your goods and services improperly can lead to delays, rejections, or narrow protection that fails to adequately cover your brand.
An attorney will help you accurately describe and classify your offerings to ensure your trademark covers the full scope of your business activities and is properly protected under the law.
4. Avoiding Office Actions and Rejections
An Office Action is a formal response from the USPTO examining attorney identifying legal issues or deficiencies in your application. These can include procedural errors, confusingly similar marks, or descriptive language.
Responding to Office Actions correctly requires legal argument and familiarity with USPTO procedures. A trademark attorney is equipped to handle these issues effectively, crafting persuasive responses and increasing your chances of approval.
Applications filed without legal assistance are significantly more likely to receive Office Actions—and less likely to succeed.
5. Strategic Brand Protection
Trademark registration is about more than filling out a form—it’s a strategic legal decision. An attorney can help you decide not only what to register, but how to protect it in the most comprehensive way.
This might include registering logos, slogans, product names, or even sound and color marks. It could also involve planning for international protection, licensing agreements, or monitoring for infringement. A lawyer helps you think beyond the application to build a strong, defensible brand portfolio.
6. Long-Term Maintenance and Enforcement
Trademark registration isn’t a one-time event. To keep your trademark active, you must file ongoing documents and meet strict deadlines, such as the Section 8 Declaration (between years 5–6) and renewals every 10 years.
Missing these deadlines can result in the cancellation of your registration. An attorney can track these requirements and ensure your rights remain protected.
Additionally, an attorney can assist with enforcing your rights if someone infringes on your mark. Whether it’s sending a cease-and-desist letter or initiating legal proceedings, your attorney will be your advocate in protecting your brand from unauthorized use.
7. Increased Likelihood of Approval
Statistics from the USPTO and independent studies show that trademark applications filed with the help of an attorney are significantly more likely to be approved than those filed without one. The process can be time-consuming and costly if done incorrectly, and a lawyer can help you avoid expensive mistakes.
In fact, applicants represented by attorneys are far more likely to successfully navigate both the application and opposition phases of the trademark process.
8. Peace of Mind
Perhaps the most valuable reason to hire an attorney is the peace of mind it provides. Trademark registration is a legal process with long-term implications. Having a trained legal professional guide you through it ensures your brand is fully protected, your application is properly handled, and your rights are secure.
Whether you’re a startup founder, small business owner, or growing enterprise, the cost of hiring an attorney is minimal compared to the risk of losing your brand—or facing a legal challenge—because of a flawed trademark application.
Conclusion
While it’s possible to file a trademark application on your own, the risks, complexities, and long-term consequences make it clear why hiring an attorney is the best route. From conducting thorough searches and avoiding rejection, to ensuring complete legal protection, a trademark attorney is your most valuable asset in securing your brand’s identity and future.
If your brand matters to your business, it’s worth protecting—and that starts with getting it right from the very beginning.
Robert A. Mullins is a business litigator based in Turner Padget’s Augusta, Georgia office where he focuses his practice on trademark and copyright infringement as well as intellectual property, corporate, and environmental law. Robert provides clients with both litigation support and proactive business counseling. If you have questions or need guidance on protecting your business, please reach out to Robert at rmullins@turnerpadget.com to schedule a consultation.
