If you are looking for trademark registration for your company’s intellectual property, you might be asking yourself: do I need a trademark expert? In most cases, the answer is yes.
Your trademark professional can also advise you on taking legal action against infringers. Even after you have achieved registration, you expert will continue to assist you: they will continue to monitor the appropriate use of your mark; alert you to potential infringers; and advise you on your own use of your mark.
A trademark expert can advise you on whether or not your mark conflicts with other marks of registered owners. Your trademark professional will ensure that your mark is not identical to or confusingly similar with the marks of other holders, so to give you the best chance of achieving registration.
Choosing a Trademark Expert
Finding a trademark expert in your area is a simple task: you can enter the search terms ‘trademark expert’ into Google and find thousands of results. You can also find trademark businesses through word of mouth by asking your friends, family, or colleagues for their advice. Finding an expert is simple: but finding the right expert can be difficult. To ensure that you find the right trademark expert for your business, screen each expert by the following qualifications.
A Trademark Expert with Experience
The most valuable asset your expert can have is their experience within the field. Having a degree is one thing: having experience is another. An expert with experience in the field will be familiar with the common mistakes associated with trademark registration. They will be able to look over your application and identify any errors you have made before you file it.
You might also check that your trademark professional has had experience in filing applications within your specific industry. If your expert is experienced in filing applications in industries associated with your own, they will be able to clearly and succinctly describe your products or services in your application.
Trademark Expert Qualifications
There are a number of trademark ‘professionals’ that you will come across in your searches, particularly online. Avoid hiring someone who cannot show you their qualifications: while they may offer cheaper rates, they are not necessarily practised in the field of trademark law, and you may find yourself spending more money than you expected on legal fees.
Ensure that your trademark business is licensed. A licensed expert will have a deep understanding of Australian trademark law: they can provide you with legal advice that is specific to your mark. A licensed expert will also be able to far better conduct comprehensive searches of all of the relevant databases, as well as perform market research to ensure that your mark does not conflict with another party’s.
Bear in mind that the degree from the best law school does not equal the best trademark expert. Ensure that your trade mark professional combines a legitimate education with experience in the field: do not be distracted by the titles on their degree.
Trademark Expert Attentiveness
Ensure that you steer clear of trademark experts who are in the habit of collecting applications and out-sourcing them to paralegals. This is where personal referrals or internet review websites come in handy: you can ask around to find the expert with the best personal service.
Before you hire a trademark expert, verify with them that they will be the person handling your application and subsequent registration. Even if your expert works in combination with a paralegal, they need to guarantee that they will personally oversee each stage of your registration. This includes drafting and reviewing your application before it is filed.
The trademark registration process is lengthy and complex: in some cases, your application may take over a year to process. During this time, your trademark expert must be able to keep you informed on any updates or contest concerning your application.
Look for an expert who is willing to contact you with updates, and ask about the frequency of that contact. Your expert should contact you whenever your application reaches a new stage: they should also keep you updated on any legal issues or suits.
Before you decide on your expert, write a shortlist of potentials and then ask each about what services they can provide. Perhaps you want to register your trademark overseas, or you wish to trademark something unconventional, such as a colour. Your expert must be able to provide you with the services you require. You might decide to arrange an interview or a telephone consultation before you make your final decision.
Hire a Trademark Expert for Your Best Chance of Registration
There are people who will tell you that hiring a trademark expert is unnecessary. In most cases, however, it is more expensive to refrain from hiring an expert.
Ensure that your expert is willing to work to your standards. Your trademark professional should not only perform standard duties, but also see your application through to registration, and monitor it afterward. Your expert should not only be able to register your mark: they should also be able to evaluate your options and provide you with advise that is tailored to your business.
The decision of whether or not to register your marks is your own: the right expert will only be there to support you through the process.
Quick Off the Mark® is a division of Mark My Words Trademark Services Pty Ltd (MMW). MMW was founded in 2011 and is headed by Jacqui Pryor, a registered trade marks attorney with more than 16 years experience.
In 2015 MMW acquired Quick Off the Mark®, which is a fast and affordable Australian trademark registration service. Quick Off the Mark® offers fixed fees that are affordable to help Australian businesses register their trademarks.
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.