Hiring a U.S.-licensed attorney (2024)

Discover if you are required to hire an attorney and why you should hire an attorney, even if you are not required to.

Am I required to hire a U.S.-licensed attorney to represent me at the USPTO?

It depends on the location of your domicile.

Yes, if you are a foreign-domiciled trademark applicant, registrant, or party to Trademark Trial and Appeal Board proceedings. You must be represented at the USPTO by an attorney who is licensed to practice law in the United States.
No, if you are a trademark applicant, registrant, or party domiciled in the United States or its territories. Nevertheless, we strongly encourage you to hire a U.S.-licensed attorney who specializes in trademark law to guide you through the registration process.

For more information about this, see the spring 2019 USPTO trademark rules change.

What can an attorney do for me?

Attorneys can provide crucial legal advice

An attorney who is licensed to practice law in the U.S. and experienced in trademark law can advise you about many important legal issues. These include:

Determining if your chosen trademark can be legally protected
Determining the appropriate filing basis for your trademark application
Preparing and filing a trademark application with the USPTO that is complete and accurately identifies your goods and services
Selecting an appropriate specimen that shows how your trademark is used in commerce
Responding to questions and refusals to register your trademark from a USPTO trademark examining attorney
Helping you understand the scope of your trademark rights and the best ways to enforce them
Defending against challenges brought by others against your trademark
Preparing and filing documents with the USPTO to maintain your registration.
Although USPTO trademark examining attorneys can provide information about the federal registration process, USPTO employees cannot give you legal advice.

Attorneys can conduct trademark clearance searches

Did you know that if someone registers a similar trademark with the USPTO before you do, they can potentially block your trademark from registering? And that even when similar trademarks aren’t federally registered, they could ultimately prevent you from using and/or registering your trademark?

An attorney can let you know if your trademark should be available for your use and registration and decrease the possibility of you having costly legal problems by conducting a comprehensive clearance search for potentially conflicting trademarks and providing a legal opinion.

A comprehensive search includes searching the following sources for trademarks that could potentially conflict with yours:

The USPTO's database of federally registered trademarks
U.S. state trademark registration databases
Other sources for common law rights unregistered trademarks.

This search occurs before filing your application.

Attorneys can help you enforce and maintain your trademark rights

It's your legal responsibility to monitor and protect your trademark from infringement by other parties. An attorney can help you understand the legal scope of your trademark rights and advise you on the best way to monitor and enforce those rights. He or she can tell you specifically what to do if you discover other parties are using and infringing your trademark or if other trademark owners claim that you are infringing their trademarks.

After registration, an attorney can also help ensure that all required registration maintenance documents are timely and accurately filed, so you can maintain your registration for as long as you use your trademark.

Attorneys can represent you at the USPTO's Trademark Trial and Appeal Board

If you disagree with an examining attorney’s final refusal to register your trademark, you can file an appeal of that decision with the Trademark Trial and Appeal Board (TTAB).

If a party believes that either they’d be harmed by registration of your trademark or your existing trademark registration should be canceled because it conflicts with theirs, they can challenge the registration of your mark by filing an opposition or cancellation proceeding with the TTAB. Likewise, you can challenge someone else’s trademark application or registration at the TTAB by filing an opposition or cancellation. Oppositions and cancellations are trial proceedings similar to litigation in federal court.

Appeals and opposition and cancellation proceedings all have specific procedures and strict deadlines. A U.S.-licensed attorney who is experienced in trademark law and knowledgeable about TTAB proceedings can navigate these often complex proceedings, present your best case or defense, and help you settle the dispute, if appropriate.

Why must my attorney be licensed to practice law in the United States?

Our regulations specify that only an attorney who is an active member in good standing of the bar of the highest court of any U.S. state or territory can represent you in a trademark application, registration, or TTAB proceeding at the USPTO. Non-U.S.-licensed attorneys and non-attorneys do not meet this criteria and cannot represent you in a trademark matter at the USPTO.

Non-U.S.-licensed attorneys and non-attorneys may give you inaccurate information and legal advice about your trademark rights and the registration process in the United States. This could:

Jeopardize the legal validity of your application or registration
Prolong the time it takes for your application- or registration-related submission to be examined
Cause your application to be rejected or abandoned or your registration to be cancelled.

U.S. trademark law and USPTO regulations must be followed because they govern the trademark registration process before the USPTO, proceedings before the Trademark Trial and Appeal Board, and the conduct of attorneys who practice before the USPTO.

We take the unauthorized practice of trademark law very seriously. Your trademark submission can be rejected, or the legal validity of your trademark registration could be jeopardized, if you take advice or receive assistance from someone who is not authorized to practice law before the USPTO.

We also take very seriously the competency and conduct of attorneys who practice before the USPTO. All attorneys who practice before us are subject to our disciplinary jurisdiction and must abide by the USPTO Rules of Professional Conduct. These require that the attorney:

Has the knowledge and skill to competently represent you
Consults with you and keeps you informed about the status of your trademark matter
Does not make false statements of fact or law to the USPTO.

The USPTO's Office of Enrollment and Discipline (OED) handles allegations of misconduct by attorneys.

How do I find a U.S.-licensed trademark attorney?

To find an attorney who can represent you before the USPTO in trademark matters, you can consult U.S. telephone listings or the internet, or contact the attorney referral service of a U.S. state or local bar association (see the American Bar Association's Consumers' Guide to Legal Help).

Make sure that the attorney you hire has experience prosecuting trademark applications at the USPTO and handling proceedings before the TTAB. The USPTO cannot help you select an attorney or recommend one.

Free or reduced-fee legal services are provided below

The USPTO's Law School Clinic Certification Program allows law students enrolled in a clinic program to practice intellectual property law before the USPTO under the strict guidance of a law school faculty clinic supervisor.
The American Bar Association posts a list of Pro Bono IPL Resources in the United States.
The International Trademark Association (INTA) has also established the INTA trademark pro bono clearinghouse pilot program.

How do I know if the attorney or filing firm I hired is legitimate?

Many private companies offer legal services, such as assistance with filings or responding to an office action, or other services. Such services may be legitimate if provided under the supervision of a licensed U.S. attorney. But many of these companies are not affiliated with licensed U.S. attorneys, and cannot lawfully provide such services. Some offer services of dubious value, such as for example, offering to record trademarks in a private registry.

Check out the protect your application or registration webpage. Review the parties and filing firms listed as subject to USPTO’s Orders for Sanctions or listed as an entity responsible for Potentially Misleading Solicitations if you have a concern about a filing entity with whom you are working.