Do You Really Need to Hire a Trademark Attorney?`

The Answer is Yes ... Put Your Big Girl Pants On.

As an attorney, I get a lot of panicked emails in my inbox.  These emails range from people that have run into a legal issue and don’t have the proper contracts in place, are losing money, going through copyright or trademark infringement, OR have filed their own trademark application and have received an Office Action, meaning the United States Patent and Trademark Office has an issue with their application because they did it incorrectly or found a similar trademark, and now have no idea what to do.  

These people always have a bit of embarrassment in their tone because they *know* it’s not something they should have attempted on their own.  Kind of like when you call the plumber after you *tried* to fix the toilet and ended up making a bigger and more expensive mess than if you had just got a professional involved at the first sign of trouble.  And often my heart goes out to them because now they have put their entire brand on the line and could potentially lose it, whereas if they had hired an attorney, it may have had a very different ending.

They wanted to save money or they thought it looked pretty easy or their Aunt Jane did hers.  Now don’t get me wrong, there are people that have success when filing their own trademarks, just like there are people that fix their own frozen pipes, diagnose their own illness or fix their car's carburetor.  And of course by necessity #COVID ... cut their own hair ... and we have all seen the nightmarish results.

Sooooo - while there are those who may flirt with he idea of venturing outside their area of expertise ... But should they? 

You didn’t go to law school (I’m assuming) just like I didn’t go to medical school or electrician school.  Experts EXIST for a reason - to do the thing that they are meant to do.  As a coach or service provider, you are meant to do YOUR thing. 

I assume that as a coach, you think most of your clients actually need you right? 

And that you don’t suggest they “coach” themselves.  I also assume you’ve had people come to you after months and months of trying to do things on their own, only to have you sweep in and help (at which point you are glad they did but also know you could have saved them so much time, money, heartache!)  

Registering a trademark is the same. I went to school (A LOT of school) for this, I have done hundreds of these, I wouldn’t expect you to get it right.  

There are a lot of things that can go wrong with a trademark application, but here are the six that I see most often:  

  1. Receive an office action because you file under the wrong class (there are 45 of them…)
  2. Receive an office action because you file with the wrong class description (there are thousands of possibilities)
  3. Receive an office action because you file with the wrong business entity or information
  4. Receive an office action because you submitted the wrong type of specimen
  5. Receive an office action because there is a similar mark to yours
  6. Receive a suspension because somebody else filed a similar mark before yours
Top trademark applications issues: you file under the wrong class; You file with the wrong class description; You file with the wrong business entity or information; You submitted the wrong type of specimen; There is a similar mark to yours; Somebody else filed a similar mark before yours

Any of these can delay your application or stop it in its tracks.  Often people are intimidated and just drop their filing altogether because the Office Action looks SO SCARY to a non-legal person as many require legally founded arguments or responses.  And in many cases that same trademark application would be successful if someone (aka an attorney) was involved in the process to fight for them.  And if while reading this you are not exactly sure what a USPTO Office Action is along with the fine points of preparing a trademark application to avoid one as well as the best legal strategies to overcome one ... well you may be out of your depth as a DIYer.

As all of this can end up costing you way more than if you just hire an attorney in the first place (like *cough* an attorney with a full service trademark package *cough*).  Those people that do sleep better at night, don’t end up with high blood pressure, and don’t have to send that panicked email.

So who do you want to be?  I KNOW that you want to be the business owner that hires the expert. I know that because I know that is how you want people to look at you.

If you’ve gotten an Office Action and need help resolving it, reach out!  There is no shame here, I’m happy to help you. And I know that next time, you will know where to start :)

Sarah Kornblet Waldbuesser - Attorney for Coaches & Online Business Owners

Sarah Kornblet Waldbuesser, Esq.
Attorney for Coaches & Online Business Owners

After several years at a law firm and a few career jumps, she ended up falling in love with online business and loves helping entrepreneurs achieve their dreams in a smart and protected way. She is also an adventurer, traveler, and food and wine lover. When not at her computer, she loves hanging with her family, having wine with friends, flying around the globe and connecting with other online business owners.


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