Trademark Attorney Defined

What is a Trademark Attorney? 

In the United States, a trademark attorney is an individual who is licensed to practice law in a specific state and is specialized in trademark and service marks. The titles trademark attorney and trademark lawyer are often used interchangeably, however both titles have the same expertise in filing and prosecuting trademark and service mark registration applications at the USPTO.

Our primary attorney at Carson Patents is a USPTO registered patent attorney licensed in California who also has expertise in trademarks and service marks. Our primary trademark paralegal is sponsored by the USPTO and can file applications to register trademarks. We specialize in handling trademark and service mark registration applications, maintaining trademarks and service marks, and managing licensing agreements. Feel free to contact us to discuss your trademarking options. Rest assured, all communications are confidential and privileged.

How to Become a Trademark Attorney

A trademark attorney is a lawyer who focuses on trademark registration and prosecution. The first step in becoming a trademark attorney in the U.S. is obtaining a bachelor’s degree. Contrary to popular belief, a bachelor’s degree in a relevant field such as law, criminal justice, or business is not imperative to get into law school. A bachelor’s degree in any field is sufficient to get into a law school program as long as the degree is accompanied by a high grade point average. Law school programs also do not typically require the completion of specific prerequisite courses as an undergraduate. The courses taken in college or field of bachelor’s degree do not matter as much as the final undergraduate GPA.

Preparing for the LSAT

Working towards an undergraduate degree usually takes a minimum of four years. Once a bachelor’s degree is obtained, the following step in becoming a trademark attorney is to take the Law School Admission Test (LSAT). The LSAT is a standardized test designed to assess the reading comprehension, analytical reasoning, and logical reasoning of potential law school candidates. It is advised to prepare for taking the LSAT as early as possible once decided on applying to law school.

Although being an integral part of getting into law school, taking the LSAT does not guarantee admission into any law programs, a high test score does. LSAT scores can range from a low score of 120 to a perfect score of 180, with the average LSAT score being approximately 152. In order to be accepted into the top law schools, a candidate would need to receive a competitive score over 160. A lot of preparation goes into obtaining a high score on the LSAT.

Preparing for the LSAT requires a lot of devotion and dedication as it involves spending an immense amount of time studying. Committed law school candidates devote much of their time into finding helpful resources and utilizing those resources to study. Dedication is essential in order to stay focused and motivated during the long hours spent studying. There are many helpful resources that assist with preparing such as taking a diagnostic LSAT test, LSAT prep books, courses, or practice tests.

Important Tip: It is advised to study for a minimum of three months prior to taking the LSAT, however top candidates likely begin preparing at least a year in advance.

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What Services can a Trademark Attorney Provide?

Trademark attorneys are knowledgeable about the laws and regulations governing trademarks and service marks. They help individuals and businesses protect their marks by ensuring that they are properly registered, providing legal guidance throughout the process. If a client’s trademarks are used without permission or infringed upon, trademark attorneys can take legal action to protect their clients’ intellectual property. A trademark attorney’s provided services can include but is not limited to:

1. Mark Research: A trademark search involves identifying any existing trademarks that may be similar to the desired mark in order to assess the likelihood of success in mark registration.
2. Trademark Application Writing: Writing a trademark application involves gathering all relevant information in detail about the desired mark, the goods or services it represents, and the basis for filing.
3. Trademark Application Filing: Filing a trademark application involves submitting the necessary documentation and paying the required fees to the relevant government trademark office.
4. Responding to USPTO Issued Office Actions: Writing an office action response letter either: (1) provides arguments or evidence to defend the application and/or (2) amends the application to address the examiner’s concerns. 
5. Taking over Trademark Applications: Taking over a trademark application assists clients in moving forward with the registration or prosecution of an application.
6. Trademark Maintenance: Maintaining a registered trademark can involve regularly monitoring the relevant market, keeping track of renewal requirements, enforcing against infringement, managing licensing contracts, and more.

Trademark and Service Mark Registration Application Process

When registering a trademark or service mark, we follow a 4-step registration process we refer to as our 4 steps to trademark: (1) Mark search; (2) Writing the registration application; (3) Submitting the registration application; and (4) Responding to any office actions. Filing a trademark application does not guarantee mark registration. The USPTO must examine and approve the application in order for the mark to be registered.

You Can Register a Trademark in the U.S. and in Countries All Over the World

Trademark registration is territorial. In other words, trademarks are issued and protected within individual countries around the world. For many businesses, registering their trademark in their home country is typically sufficient. However, if your business sells goods and services in several countries, you may want to seek trademark protection in all countries where your goods and services are sold.

Some U.S. businesses may even find federal U.S. trademark registration unnecessary if they are appropriately registered at the state level, as common law offers certain legal protections. However, trademark registration with the USPTO offers certain advantages, such as the right to sue in federal courts for brand protection. In addition, if you are based in the U.S., your trademark must be registered federally before it is registered internationally.

U.S. Businesses Register Trademarks with the USPTO Before International Registration

For businesses based in the U.S., international trademarking starts with filing an application with the USPTO. The same is true in other countries; international trademarking begins with filing an application domestically. International trademark registration is available through the Madrid System at WIPO. Once a national application is approved and a trademark is issued, the Madrid Protocol (the governing treaty of the Madrid System) provides a single streamlined international application to secure protection for the mark in other countries.

Entrepreneur Tip: Business owners can apply to register a trademark for business names, brand names, logos, slogans, or other distinctive sights, smells, or sounds that they are using without infringement to identify their goods and services. If your business is in its early stages and your goods are set to be sold soon, you may still be able to apply to register a trademark for future use. Read our article about business name branding for more insights. Also, in our article on genericization, you can learn more about trademarked brands that have become so well known that their trademarked name is commonly used as a generic term for their product or service.

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How a Trademark Attorney Can Help with Trademark Applications

If you have been using your mark and it does not infringe on existing registrations, you may very well be able to register your trademark. Although it is possible to complete and submit a trademark application on your own, we recommend working with an experienced trademark lawyer to craft a strong application and increase the likelihood of approval. A trademark lawyer can also help increase the legal protection provided by the trademark.

Attorney Assistance with Preparing the Trademark Application

To successfully register your mark, it is crucial that you are actively using the mark to identify your goods and services and that you are not violating the trademarks of others. The first step in our four-step trademark process — the clearance search and common law search — ensures that the mark you want to register is not already being used by someone else.

It is advised to work with an experienced trademark lawyer who can perform a comprehensive and effective search before proceeding with the application. A trademark lawyer can also ensure that your application is thorough, properly formatted, and written for optimal legal protection. For example, an attorney may suggest pursuing broad registration for your mark for more flexibility. Read more about trademark registration best practices.

A Separate Application is Required for Each Mark

Note that a separate trademark or service mark registration application is required for each mark. For example, if you want to trademark a business name and a logo for the business, you would have to file two separate applications. The first application would be for the words of the business name. This is usually registered as a kind of trademark called a standard character mark, which offers the most flexibility in use options. The second application would be for the logo image (with or without the business name), and is usually registered as a kind of trademark called a special form mark. A trademark lawyer can help you determine what kind of trademark application to pursue.

Attorney Assistance with Trademark Prosecution and Litigation

If there are problems with your application, your trademark application may need to be prosecuted. This means that the USPTO will issue office actions (letters) regarding the problems with your application, and you must file responses to these office actions. If you are not doing so already, it is especially recommended to hire a trademark attorney for this process to ensure that you file complete and proper responses to these letters. Responding thoroughly and correctly is important for increasing the odds of your application getting approved. At Carson Patents, we offer assistance with writing and filing responses to office actions from the USPTO for trademark registration applications, even if you started the application process independently.

Once your trademark is registered, you may face legal disputes regarding the use or ownership of your mark, which require trademark litigation. This may occur if someone uses your mark without legal permission, which is known as trademark infringement. In the case of legal disputes, a trademark lawyer can help you defend your trademark in court and protect your brand.

When seeking trademark protection, be cautious of scammers posing as attorneys or government agencies. Explore our trademark scam warning blog post to learn how to identify and avoid trademark scams.

Free Trademark Consultation with an Intellectual Property Attorney

At Carson Patents, we highly recommend consulting with a trademark lawyer when branding your business and applying to register a trademark or service mark. We offer legal services from a professional US trademark attorney for registering all kinds of trademarks and service marks, accessible online from any location. Starting the application process with our team is straightforward using our streamlined Trademark Registration Intake Form. You are welcome to schedule a free trademark consultation via video or voice call with our team to learn more.  

We offer quoted services for trademark registration applications in client engagement letters. Our fees are per application, and we offer reduced rates for simultaneous filings of multiple applications for the same business or entrepreneur. Veterans and their dependents enjoy a 25% discount on our fees. Please note that the USPTO charges a filing fee per class of use for each application, which is either $250 or $350 based on the application type and reason for filing. Read more about trademark costs.

Note: The available appointment times align with our attorney’s daily work calendar. This ensures that our attorney is available during the scheduled meeting. Appointments made through our free trademark consultation links are actively open, and our attorney will meet with you at the day and time you select. Daily open slots vary and are subject to changes before being booked. If you have a specific day and time in mind, feel free to contact us via call, text, or email to request your preferred day and time.

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Online Trademark Attorney Help Available for International Trademark Registration

Carson Patents also offers assistance with international trademark registration in other countries. We collaborate with affiliated trademark attorneys who are licensed in various countries, ensuring representation in locations where we cannot practice directly. Read more about registering a trademark internationally using the Madrid Protocol.