Some people ask before applying for a trade mark whether they need a trade mark attorney or trade mark lawyer to assist in protecting their brand. For the relatively small costs involved, we certainly recommend you use a legal expert to handle your trade mark registration.
And here’s our 5 reasons why we think you should use a trade mark attorney:

  • Protect the right trade mark. It may sound simple but often the devil is in the details. For example, often it is better to protect the plain words of your brand, rather than the logo version which contains those words, as this will give you the most basic and strongest protection. In other cases, we have seen businesses protect the most comprehensive version of their logo in order to “ensure it’s all covered” but then fail to use that version of the logo, leaving them unprotected and liable to a non-use application.
  • Cover the right goods and services. A common mistake here is to not protect broad enough, leaving it open to competitors in relation to goods or services that, although you are not yourself selling, are clearly in your marketplace. On the other extreme, over claiming goods and services can very quickly increase costs, in particular government fees, unnecessarily.
  • Reducing avoidable issues during examination. There are many reasons why the government can refuse your trade mark application, and using an attorney to draft your application will greatly increase your chances of registration.
  • You are not an expert. There are many pitfalls when applying for a trade mark. You’re not the legal expert so it’s best to leave that to someone who knows the law and does it correctly the first time.
  • Saving you time. Understanding the entire trade mark process and dealing with bureaucracy takes time and energy. Trade mark lawyers deal with this on a daily basis and know the system inside-out.

By the way, as with lawyers, communications between a registered trade mark attorney and their clients are privileged. Daniel McIntosh, principal of Trademarkings, has worked as both a lawyer and trade mark attorney.