Should I Register a Trademark Myself (DIY) or Hire a Trademark Attorney?

 

When you’re looking at registering a trademark for your business, you might not be too clear on whether you should do it yourself, hire a lawyer or use a trademarks attorney.  You might feel that you can probably do just as good as job as the professionals, and it’s tempting to feel you can save money on service fees by filing the application yourself.

However, the process for registering a trademark can at times be complicated, and any mistakes or changes you may require after your application has been submitted can cost you time and money.  You might even find that your application is rejected based on a simple issue that could have been spotted and solved by a trademark expert.  Protecting your business name and brand is important, and it pays to use someone who will not only be able to help you make your application successful, but make the process as smooth and hassle free as possible.

We recommend that you use a trademarks attorney, or if you decide to use a solicitor, make sure that they have IP and or trademark experience.

What are the risks of DIY in terms of trademarks?

There are several risks of DIY trademark applications, and perhaps the biggest is getting it wrong in terms of the protection sought. This can leave you without the rights you thought you were gaining/registering, which in turn can lead to more costly processes in the future in having to re-register a trademark and go through the process again, or, not being able to stop others from use of similar brands because you don’t have the coverage over the right goods/services to do so.

We also see a number of trademarks filed by the applicants directly that get reports issued during examination. These reports generally arise from an attempt to register a trademark that is too similar to another, where proper searches have not be conducted prior to filing, or, because the trademark is not actually a trademark. Overcoming these issues can be complicated, and “DIY” applicants are more likely to simply abandon the process because it appears too difficult or time consuming.

Having a qualified trademarks professional involved will ensure you have all the options moving forwards. In some of these cases, the path forwards is actually quite simple, yet, not always known to the DIY applicant.  We will be able to guide you through what can seem to be insurmountable issues for a successful result at the end.

What about general lawyers who offer trademarking services?

In general, a lawyer who offers trademark services would usually be fine. As with any time you are engaging a professional to assist in an aspect of your business, checking out the service provider’s experience and qualifications is critical to ensuring you are getting value for money and the very best advice you can. Some lawyers may not be practicing specifically as trademarks attorneys (which are registered separately) but have vast and extensive knowledge and experience in the area of IP and would be well equipped to assist you with your application.

A lot of lawyers and solicitors work within specific practice areas – just as trademarks attorneys specialise in trademark law –  and to get maximum peace of mind we believe it’s good to select one that works in the area you need. You wouldn’t go to a trademarks attorney if you needed a will put together, so why see your family lawyer when you need trademark advice?  Many solicitors will have work experience in the business and commercial space, and some will have strong skills and experience in related legal matters such as business mergers and acquisitions or contract drafting. It’s not uncommon for many to also have experience also in intellectual property by nature of what they do.  Just be sure to check out their experience when it comes to trademark registration, enforcement and strategy.

Why choose a trademark attorney over a general lawyer?

From time to time a client will come to us for advice, having previously spoken with their usual solicitor, only to learn that some information on trademark law or the trademark registration process has not been robust enough.  This can be for a number of different reasons, but it highlights the importance of finding a professional who is an expert in the more complex parts of the Trade Marks Act 1995 in Australia.

A trademarks attorney should know the trademark process inside out, as well as having good understanding of their client’s business and their needs in respect to trademark protection. Trademarks attorneys are expected to be able to advise clients specifically about matters arising from Trademark Law – issues such as how to register a trademark, how to address adverse examinations of trademarks, how to oppose and defend oppositions, how to handle infringement matters and ensure appropriate brand protection strategies are in place taking into consideration risks to the client.

The importance of having a trademark strategy

As well as being able to advise you on the day to day matters and administration of registering a trademark, a good trademark attorney should be able to help you develop a longer term trademark strategy.

A recent situation with one of our clients highlights the importance of maintaining a ‘big picture’ view, and the risks associated with following one strategy over another.  We had a client who had selected a new name to use as a brand.  They had consulted with their usual business solicitor who conducted preliminary searches and suggested there may be a conflict with an existing trademark. That trademark though did not appear to be in use by the proprietor. Once a trademark is registered it is vulnerable to removal if not in use but only once it has been on the register for five years. The earlier mark in this example had been registered 4 years and 8 months. The firm advised the client (who acted on the advice) to seek a consent, on the basis the earlier party was not making use of the mark – suggesting it would be vulnerable to that removal.

Unfortunately, this put the client in a risky position. The other party still has several months to make use of their mark before an attack by our client could succeed under the relevant piece of legislation. Therefore the other party may refuse consent and object to any use or registration our client attempts for the potentially similar name. The other party may also proceed to make use of their trademark and prevent our client from having any weight or power in further negotiations on the basis of non-use. Had the client understood the 5 year rule they wouldn’t have contacted the earlier trademark owner yet but waited just a few months to ensure strong prospects in their position in any negotiations.

Get peace of mind with a trademark expert

As you can see, trademarks, filing an application and protecting your rights is an important part of business, and one you need to get right the first time.  While you may think you’re saving yourself money and time by filing your trademark application yourself, you may find that you become bogged down in complex legal matters or even challenged by other businesses and you’ll need to respond.

Using a qualified trade marks attorney will ensure that you’re being advised by someone who has first-hand experience with registering trademarks, dealing with any queries or adverse examinations, handling potential infringements and making sure you have sound brand protection strategies in place.

Give us a call today, we’d love to hear from you.

Disclaimer – The advice provided in this blog is general advice only. It has been prepared without taking into account your business objectives, legal situation or needs. Before acting on this advice you should consider the appropriateness of the advice, having regard to your own objectives, legal situation and needs.post_disclaimer