Is it worth getting a lawyer to get your trademark secured for you? I would say that it depends on the lawyer.
I would always advise and recommend that you go to somebody who is actually a qualified trademark attorney. Being a trademark attorney is a separate qualification and it means the person has done some extra study in trademark law. I would also ask, when selecting a trademark attorney, what their experience is? How many trademarks do they personally have under their belt? And how many contentious cases have they dealt with?
Contentious is where there becomes an argument over the case you should ask if they have been to court? Have they done any oppositions? Because if they have done these things in the past, their knowledge will be greater than someone who’s filed a few applications and haven’t actually had to deal with any of the tricky problems that can arise. In one situation, I had a client come to me for trademark help after the trademark was filed by her lawyer, who turned out to be her divorce lawyer. So in that situation, she trusted him because he handled her divorce, but unfortunately he did not have much experience with trademarks. She didn’t think to ask the question “is this something that you’re experienced and skilled in?”
So, is it worth having a trademark attorney or a lawyer file your trademark? It depends on the attorney and their experience. I’m reluctant to recommend people do trademark filings themselves because there are certain aspects to it that I’ve seen people get wrong over the years including how broad they should claim, what classes they should be in, and the format of the trademark.
I’ve seen one client register a trademark for their name and for a logo, and the logo was actually a stock image. So in the end, the trademark could be invalidated because they didn’t own the copyright in the logo. So there are a few things to think about, but if you’re doing it yourself, make sure you’re as knowledgeable and informed as possible about it. I wish you good luck with it, my name is Cathryn Warburton and I am the legal lioness.
