Yes and No. Or, as we lawyers are fond of saying...it depends. Let me explain.
Trademark applications are deceptively simple. You might be thinking how hard could it be? Why should I pay an attorney to do it when others are willing to do it for less? A skilled trademark attorney is someone who has experience in prosecuting trademarks, not simply filing them. You want to make sure that your trademark attorney is planning on prosecuting the mark for you and not simply filing it. Be careful about stepping over a dollar to pick up a dime.
To begin, you need to know the exact mark you wish to protect. You need to answer some basic questions like: is it stylized, is it in color, has it been cleared, who will be using the mark? Next, you need to know precisely what goods and/or services you want to cover. You need to understand what proper use is and whether you are using the mark now or will in the next three years.
Over the years, I have worked with several clients after a well-intentioned person (e.g., a general practice attorney, an employee, or even LegalZoom) has filed an application with the USPTO and an Office Action has issued. While Office Actions may not be completely avoidable, some of them certainly are. In some cases, the mark was never cleared, in other cases, the description of goods and services was incorrect or overly narrow and provided the client with no protection. In still other cases, the clients did not use the mark they applied for. This is hard to believe, but it happens with enough frequency that I felt the need to write this post. Many issues are avoidable in the first instance but not once the application has been filed.
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