Trademark Attorney or General Practitioner?

If you're a small business owner, you probably have some kind of legal counsel. In my experience, most small business owners have the benefit of a local attorney who helps them with the company formation process and general legal and contractual issues. However, most small business owners do not have a trademark attorney for the very simple reason that trademark attorneys are hard to come by in small or mid-sized communities.

The question then arises: "Do I really need a trademark attorney to handle my trademarking issues, or can my local attorney do it?" The answer to this question of course depends on the competency of your local attorney in the field of trademarks. Some general practitioners may have a particular expertise in intellectual property matters, in which case it might make sense to allow your local business attorney to handle your trademarks. However, in the vast majority of cases, the trademark registration process is not one with which your local attorney would be very familiar. Accordingly, it often makes sense to seek the counsel of a licensed trademark attorney before filing a trademark application.

One of the main advantages to having a trademark attorney on your side is the experience he or she has with the U.S. Patent & Trademark Office. A competent trademark lawyer will likely be able to spot potential problems with a proposed trademark right off the bat, sometimes even before conducting a trademark search. For example, if a client were to ask me to help them trademark the term "ROSENBERG" for a line of clothing, I would know to tell them that such a term would likely be rejected by the Trademark Office as being primarily merely a surname, and not an indicator of the source of the clothing. Somehow I doubt I would know this kind of information if I were a contracts lawyer.

About the author:
Xavier Morales is the owner of the Law Office of Xavier Morales, http://www.SecureYourTrademark.com focusing on Trademark Registration and domain name disputes since 2007. He can be reached at 1-866-618-2517 or by email: xm@secureyourtrademark.com